Phone-N-Phone Services (Bermuda) Ltd.
v.
Shlomi (Salomon) Levi
[Indexed as: Bermuda v. Salomon]
[Indexed as: phonenphone.com]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No. D2000-0040
Commenced: 14 February 2000
Judgement: 23 March 2000
Presiding Panelist: Joan Clark
Domain name - Domain name dispute resolution policy - Pending Service
mark - Pending Trademark - International Brand - Identical - Confusingly
similar - Bad faith registration - Bad faith use - Legitimate Interests
- Intent to Use - Delay in Response - Phonetically Identical.
The Complainant alleges that the domain name in dispute, phonenphone.com,
is identical, or confusingly similar, to Complainant's trade name and pending
service mark. The domain name at issue is phonenphone.com. The basis
for the application was the "intent to use" Phone-N-Phone and PNP in connection
with long distance telephone services.
Respondent declares he developed a project, prior to Complainant's
intent to use, to create an international network for telephone wholesale,
called Phone-N-Phone, which he presented to Mr. Kelman. As early as September
1998, Respondent had promoted, together with Mr. Kelman, the name Phone-N-Phone
in connection with a new telecom project and offering of services which
were contemplated, in partnership with Horizon.
The Complainant failed to comply with the deadline indicated in the
Notification of Complaint and Commencement of Administrative Proceeding
for the submission of his Response.
Held, Name Not Transferred to Complainant
The Panel considers that no prejudice has been caused to the Complainant
by this delay and, in the interest of justice, the Response should be considered.
The Complainant must prove that the domain name is identical or confusingly
similar, that the Respondent has no rights or legitimate interests in the
domain name and that the Respondent has used or registered the domain name
in bad faith.
The Panel finds that the domain name phonenphone.com is phonetically
identical, and is confusingly similar to the trademark or service mark
Phone-N-Phone which Complainant has declared its intent to use, and for
which it has filed an application for registration in the U.S. Patent Office,
and proposes to file applications for registration in other trademark offices.
The Panel finds that before any notice to Respondent of the dispute
concerning his registration of phonenphone.com, he had made demonstrable
preparations to use a name corresponding to the domain name in connection
with a bona fide offering of services. The Respondent had rights or legitimate
interests in respect of the domain name.
In view of the conclusion reached by the Panel on the issue of legitimate
interests, it is not necessary to explore if there were any evidence of
registration and use of the domain name by Respondent in bad faith.
However, the Panel finds there is no evidence that the domain name was
registered and is being used in bad faith.
Policies referred to
Rules for Uniform Domain Name Dispute Resolution Policy
Supplemental Rules for Uniform Domain Name Dispute Resolution Policy
Uniform Domain Name Dispute Resolution Policy
Panel Decision referred to
--
Clark, Panelist: -
1. The Parties
Complainant is Phone-N-Phone Services (Bermuda) Ltd., Cedar House, 41
Cedar Avenue, Hamilton, HM EX, Bahamas (according to the Complaint, which
probably is an error and should be "Bermuda").
Respondent is Shlomi (Salomon) Levi, Mozartstraat 20, Antwerp, Belgium
2018, BE
2. The Domain Name and Registrar
The domain name in issue is phonenphone.com. The registrar is
Network Solutions, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received Phone-N-Phone
Services (Bermuda) Ltd.'s Complaint on February 2, 2000 (electronically),
and February 7, 2000 (hard copy).
On February 8, 2000, the Center transmitted via e-mail to Network Solutions,
Inc. a request for registrar verification in connection with this case.
On February 8, 2000, Network Solutions, Inc. transmitted by e-mail to the
Center Network Solutions Inc.'s verification response, confirming that
the registrant of the domain name in issue is "Levi, Salomon (PHONENPHONE2-DOM)"
and that both the administrative and billing contacts are Salomon Levi.
In a letter to Complainant's authorized representative, Steven R. Perles,
transmitted to perlesatlaw@mindspring.com on February 10, 2000, the Center
advised that the Complainant must specify an express choice of one or both
of the two mutual jurisdiction options. In the reply to the Center
from Steven R. Perles transmitted electronically on February 11, 2000,
attaching the Amended Complaint, the Complainant's representative explained
that the Amended Complaint now reflected the change in the registrar to
Network Solutions, Inc., and specified a designated jurisdiction of the
Eastern District of Virginia. The Center received a hard copy of the Amended
Complaint on February 14, 2000.
On February 14, 2000, the Center transmitted to Steven R. Perles at
the above e-mail address, and by post to Salomon Levi at Mozartstraat 20,
Antwerp, Belgium 2018, BE and by facsimile to Infoback at 1 (407) 475-1128
and by e-mail to shlomi@thephoneco.net and other addresses, Notification
of Complaint and Commencement of Administrative Proceeding. These
documents were also transmitted to the Complainant's representative Steven
R. Perles, to Network Solutions, Inc. and to ICANN. The Notification
of Complaint and Commencement of Administrative Proceeding stated, inter
alia, the Center had verified that the Complaint satisfies the formal requirements
of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the
Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and
the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy
(the "Supplemental Rules"). The Center confirmed that payment in
the required amount to the Center has been made by the Complainant and
that the formal date of commencement of the administrative proceeding is
February 14, 2000.
The Notification of Complaint and Commencement of Administrative Proceeding
stated that the last day for the Respondent to send his Response to the
Complainant and to the Center was March 4, 2000, and that in the event
of his failure to file such a Response by the due date, he would be considered
in default. In the event of such a default, an Administrative Panel
would still be appointed which would have the discretion but not the obligation
to consider a late filed Response.
On March 6, 2000, the Center notified the Respondent and the Complainant's
authorized representative, at the respective addresses as above indicated,
that he had failed to comply with the deadline indicated in the Notification
of Complaint and Commencement of Administrative Proceeding for the submission
of his Response.
On the evening of March 6, 2000, a few minutes after the Notification
of Respondent Default had been transmitted, the Respondent transmitted
a letter to the Center, advising he had taken note of the notification
of default and had been requesting documents of different parties, and
requested an extension of the due date for filing a Response.
By letter transmitted March 7, 2000, by the Center, the Respondent was
advised that, since the Notification of Respondent Default had already
issued, the Administrative Panel would decide, in its sole discretion,
whether to consider the Respondent's Response, if submitted, in deciding
the case, and that accordingly, the Center was not in a position to extend
the past deadline for the Response.
By a letter sent a few minutes later on the morning of March 7, 2000,
to the Center, the Respondent referred to his phone conversation of that
day and confirmed his request for an extension to answer the Complaint,
adding that he and his attorney had been away for two weeks and did not
have the opportunity to answer on time.
On March 7, 2000, the Respondent transmitted his Response to the Center
by e-mail and transmitted a copy of the Response by e-mail to the Complainant's
authorized representative and to Network Solutions, Inc. By a letter
of March 8, 2000, the Center acknowledged receipt of the Response.
A hard copy of the Response, with a covering letter dated March 7, 2000,
was received by the Center on March 9, 2000. The Response states
that a hard copy of the Response was forwarded to the Complainant and an
electronic copy was transmitted to the Complainant's authorized representative.
The means used by the Respondent to forward his Response by e-mail and
by hard copy to the Complainant are the preferred means of communication
stated by the Complainant in its Complaint.
On March 9, 2000, the Center forwarded to the parties a Notification
of Appointment of Administrative Panel and Projected Decision Date.
This advised the parties that Mrs. Joan Clark had been appointed as the
sole panelist in this proceeding, and advised that the decision of the
Administrative Panel was to be forwarded to the Center by March 22, 2000.
4. Factual Background and Parties' Contentions
Variations in the spelling and capitalization of Phone-N-Phone, PNP,
Phone-n-Phone and PnP which appear hereinafter reflect the ways in which
these words and letters appear in the documents submitted by the parties.
A. Trademarks or service marks of the Complainant
The Complainant alleges that on January 14, 2000, Complainant
Phone-N-Phone Services (Bermuda) Ltd. applied for service mark status for
its corporate name Phone-N-Phone and its trade name PNP in the United States.
The basis for the application was the "intent to use" Phone-N-Phone and
PNP in connection with long distance telephone services.
The Complainant also alleges that it has begun the process of
applying for trademark status for Phone-N-Phone and PNP in Hong Kong, People's
Republic of China, South Korea and Japan.
The Complainant further alleges that the Complainant uses the
trade names Phone-N-Phone and PNP in the regular course of negotiating
its status as a provider of long distance telecommunication services, and
that it intends to use the names in the provision of long distance telecommunication
services.
Although copies of the applications referred to were not annexed to
the Complaint, their existence has not been denied by the Respondent in
its late filed Response referred to below.
No allegation has been made with respect to the registration of
any trademark of the Complainant Phone-N-Phone Services (Bermuda) Ltd.
B. The Complaint
There is no indication in the Complaint that the Complainant has
rights in a trademark or service mark, consisting of Phone-N-Phone or PNP,
prior to January 14, 2000, date of the first application alleged for registration
of the marks. On the contrary, the explicit statements in the Complaint
refer to an intent to use the marks in the provision of long distance telecommunication
services and to negotiating its status as a provider of such services.
The Complainant alleges that the domain name in dispute, phonenphone.com,
is identical, or confusingly similar, to Complainant's trade name and pending
service mark.
It is alleged by the Complainant that the Respondent was employed
by Horizon Trust Corporation ("Horizon"), a Belgium company, "and an affiliate
of Phone-N-Phone France". There is no indication as to the relationship,
if any, between Phone-N-Phone France and Complainant Phone-N-Phone Services
(Bermuda) Ltd. The initials PNP are used variously in the Complaint
as the trade name for Complainant and as a reference to Phone-N-Phone France
or PnP France.
In the Complaint, it is alleged that, as part of his employment
with Horizon, Respondent provided consulting services to PNP France and
that, in furtherance of these consulting services, the company (presumably
PNP France) requested Respondent to register certain domain names "for
PNP". These domain names were phonenphone.com and phonenphone.net.
In the Complaint, it is also alleged that the Respondent "properly registered
phonenphone.net to PNP" and registered phonenphone.com in his own name.
It is impossible to know which "PNP" is meant.
The Complaint states that the Respondent stole funds and refused to
return company property including a computer system and a cellular phone.
The Complaint contains allegations of Respondent's alleged purpose
of using the domain name phonenphone.com for the purpose of extortion from
PNP, that his registration of the domain name and refusal to transfer it
"to PNP" is an act of bad faith, that the Respondent registered the domain
name with the express purpose of preventing PNP which applied for the mark
Phone-N-Phone in the United States from reflecting the mark in a corresponding
domain name, and finally alleges that Respondent had no right or legitimate
interest in the domain name phonenphone.com.
The Complainant requests that the registration of phonenphone.com
be cancelled and that the domain name be transferred to PNP.
C. The Response
In his Response, the Respondent declares he has been working in
the telecommunications industry for about ten years and that his speciality
is to set up telecommunications companies, manage them for about two to
three years and then resell them to a large operator. He declares
that he sold his last company in September 1997 to the Telecommunications
Group "Interoute" which has been purchased by Sandoz in Switzerland.
At that time, the Respondent created a new corporation named "The Phone
Company".
The Respondent declares he introduced Interoute to Mr. Eliyahu
Kelman, owner of Horizon, and that Mr. Kelman, who had no knowledge about
telecom, asked Respondent to help him manage Interoute, which Respondent
did for six months. During this period, Respondent declares he trained
Mr. Kelman and his staff in the business of international telephony, and
also worked with his own company, The Phone Company, on a project of setting
up international Gateways to create an international network for the purpose
of telephony wholesale.
The Respondent states that he presented this project, called Phone-N-Phone,
to Mr. Kelman, suggesting he participate financially in the project, to
which Mr. Kelman agreed. According to Respondent, their "deal" was
to be partners in the business that Mr. Kelman would finance and that would
be managed by Respondent.
In a letter to Respondent from Lee J. Dudak, Group Finance Director
of Interoute dated November 1, 1999, the writer states that prior to September
1998 both Respondent and Mr. Kelman had discussed with the writer a new
project called "Phone-N-Phone"; the writer, Mr. Dudak, declared that his
understanding was always that the concept for the business of Phone-N-Phone,
the plan and the technical strategy, came from Respondent and that Mr.
Kelman had been asked to assist in raising finance.
Another letter to the Respondent dated January 25, 2000, from
Chris Dewitte, Managing Director, Scriptor, also refers to the period from
September 1997 until September 1998 when he reported that Respondent set
up an innovative telecom project in partnership with Horizon, named Phone-N-Phone.
The Respondent declares in his Response that he had registered
the domain name Phonenphone.net and later Phonenphone.com and annexes copy
of an invoice showing that "The Phone Company", the company of Respondent,
had ordered the domain name phonenphone.net on May 27, 1999.
The Respondent alleges difficulties which ensued between himself and
Mr. Kelman, alleges that debts of Mr. Kelman's company, presumably Horizon,
to Respondent's company, presumably The Phone Company, amount to about
US $500,000.
The Respondent alleges that it was he who created the telephony project
Phone-n-Phone, that he has legitimate rights and interests in the domain
name of phonenphone, and that it was Mr. Kelman who "stole" the business
and the company from Respondent.
The Respondent declares that Horizon is not an affiliate of Phone-n-Phone
France, denies that Horizon provided any consulting services to PnP France,
and further declares that the owner of Phone-n-Phone offices (presumably
of Phone-n-Phone France), certain professionals and Respondent's company
(presumably The Phone Company), have not been paid for several months.
The Respondent alleges dishonesty on the part of Mr. Kelman, denies
that he stole any funds, computers or cellular phones, affirms he was full
partner of Phone-N-Phone and declares it is the Respondent who introduced
the lawsuit against Mr. Kelman in Belgium.
The Respondent reiterates that Phone-N-Phone was created by him and
that Mr. Kelman acted in bad faith and took the business away from its
original starting place in France and Belgium to the United States.
5. Discussion and Findings
As the Response was transmitted by e-mail to the Center and to the Complainant
three days after the due date and one day after Notification of Respondent
Default, as a hard copy of the Response was received by the Center on March
9, 2000, and as the Response stated that a copy of the Response was sent
by e-mail and by post to the Complainant's authorized representative, the
Panel considers that no prejudice has been caused to the Complainant by
this delay and, in the interest of justice, the Response should be considered.
The Panel has therefore analyzed the Complaint and the Response to arrive
at its decision.
Pursuant to paragraph 4.a of the Policy, Phone-N-Phone Services (Bermuda)
Ltd. must prove each of the following in order that the Respondent be required
to submit to a mandatory administrative proceeding:
(i) The domain name in issue is identical or confusingly similar to
Phone-N-Phone Services (Bermuda) Ltd.'s trademark or service mark, and
(ii) Shlomi (Salomon) Levi 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.
Paragraph 4.b of the Policy sets out four illustrative circumstances
which, for the purpose of paragraph 4(a)(iii) above, shall be evidence
of the registration and use of a domain name in bad faith.
Paragraph 4.c of the Policy sets out three illustrative circumstances
each of which, if proven, shall demonstrate Respondent's rights or legitimate
interests in the domain name for purposes of paragraph 4(a)(ii) above.
A. Identity or confusing similarity to a trademark or service
mark in which the Complainant has rights
The Complainant alleges that phonenphone.com is identical, or
confusingly similar, to PNP's trade name and pending service mark.
The Panel finds that the domain name phonenphone.com is phonetically
identical, and is confusingly similar to the trademark or service mark
Phone-N-Phone which Complainant has declared its intent to use, and for
which it has filed an application for registration in the U.S. Patent Office,
and proposes to file applications for registration in other trademark offices.
The requirement of paragraph 4.a(i) of the Policy has therefore been
met.
B. Rights or legitimate interests in the domain name
Respondent has established by an invoice that his company, The
Phone Company, ordered the domain name phonenphone.net on May 27, 1999.
It is at a later (undisclosed) date that the Respondent declares he registered
the domain name phonenphone.com. Respondent declares he developed a project
to create an international network for telephone wholesale, called Phone-N-Phone,
which he presented to Mr. Kelman. As early as September 1998, Respondent
had promoted, together with Mr. Kelman, the name Phone-N-Phone in connection
with a new telecom project and offering of services which were contemplated,
in partnership with Horizon.
The basis for Complainant's objection to the domain name must
be that it is identical to or confusingly similar to a trade-mark or service
mark of Complainant. The only trade-marks or service marks of Complainant
alleged in the Complaint are Phone-N-Phone and PNP, for which Complainant
filed applications for registration on January 14, 2000, on the basis of
"Intent to Use". The dispute cannot therefore have existed before at least
nascent rights in the service mark Phone-N-Phone were created on January
14, 2000.
Accordingly, the Panel finds that, before any notice to Respondent of
the dispute concerning his registration of phonenphone.com, he had made
demonstrable preparations to use a name corresponding to the domain name
in connection with a bona fide offering of services. This evidence shows
that, for the purposes of paragraph 4.a(ii) of the Policy, the Respondent
had rights or legitimate interests in respect of the domain name, and the
requirement of paragraph 4.a(ii) of the Policy has not been met.
C. Bad faith
In view of the conclusion reached by the Panel under the preceding
paragraph B, it is not necessary to explore if there were any evidence
of registration and use of the domain name by Respondent in bad faith.
It does appear to the Panel, however, that in light of the effort made
by the Respondent, whether alone or in partnership with Mr. Kelman, in
the 1997-98 period, to promote "a project of setting up international Gateways,
to create an international network for the purpose of telephony wholesale"
under the name Phone-N-Phone, it cannot be concluded that Respondent registered
a domain name primarily for the purpose of selling, renting or otherwise
transferring its registration to the Complainant, or to a competitor of
the Complainant, for a valuable consideration in excess of the out-of-pocket
costs related to the domain name (paragraph 4(b)(i) of the Policy).
Nor can it be concluded that Respondent registered the domain
name in order to prevent Complainant, applicant for registration of the
trade-mark, from reflecting the mark in a corresponding domain name (paragraph
4(b)(ii) of the Policy).
Nor is there any evidence that the domain name was registered by the
Respondent primarily for the purpose of disrupting the business of a competitor
(paragraph 4(b)(iii) of the Policy).
The Panel did not find that Respondent had intentionally attempted
to attract, for commercial gain, internet users to his web site by creating
a likelihood of confusion with the Complainant's mark, both because there
was no evidence to this effect, and because the mark on which the Complaint
is based was not used at the time the domain name was registered, but has
only been the subject of an application for registration based on intent
to use since January 14, 2000 (paragraph 4(b)(iv) of the Policy).
Accordingly, the Panel finds there is no evidence that the domain
name was registered and is being used in bad faith. The requirement
of paragraph 4(a)(iii) of the Policy is therefore not met.
6. Decision
The Administrative Panel finds no evidence to support two of the three
essential elements which would require Respondent to submit to a mandatory
administrative proceeding. The evidence does not establish that Respondent
had no rights or legitimate interests in the domain name and does not establish
that Respondent registered the domain name in bad faith. Accordingly,
the remedy requested by Complainant pursuant to paragraph 4(i) of the Policy
is denied. The Administrative Panel does not require that Respondent's
registration of the domain name be cancelled and that the domain name be
transferred to Complainant.
Joan Clark
Sole Panelist
Dated: March 23, 2000
Domain Name Not Transferred
