Telefonica S.A v. John Doe as Holder of Domain Name <telefonica.uk.com>
Claim Number: FA1409001579120
Complainant is Telefonica S.A (“Complainant”), represented by Julius Stobbs of STOBBS, United Kingdom. Respondent is John Doe as Holder of Domain Name <telefonica.uk.com> (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <telefonica.uk.com>, registered with Namesco Limited.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 10, 2014; the National Arbitration Forum received payment on September 12, 2014.
On September 18, 2014, Namesco Limited confirmed by e-mail to the National Arbitration Forum that the <telefonica.uk.com> domain name is registered with Namesco Limited and that Respondent is the current registrant of the name. Namesco Limited has verified that Respondent is bound by the Namesco Limited registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with CentralNic’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 19, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 9, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@telefonica.uk.com. Also on September 19, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 16, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the CentralNic Policy, CentralNic Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is the owner of the TELEFONICA mark as demonstrated by trademark registrations with the United Kingdom’s Intellectual Property Office (“UKIPO”). See, e.g., Reg. No. 2,571,343 registered June 5, 2011. Complainant uses the TELEFONICA mark for telecommunications services, with a major presence in Europe and Latin America. The <telefonica.uk.com> domain name is identical to the TELEFONICA mark as the mark is fully included in the domain name, and the suffix “.uk.com” is irrelevant.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent’s name does not appear to relate to the <telefonica.uk.com> domain name, and there is no evidence that Respondent is commonly known by this name. Respondent has failed to make demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
Respondent is using the disputed domain name as a guise to appear affiliated with Complainant by using an e-mail address with the @telefonica.uk.com e-mail string associated with the <telefonica.uk.com> domain name. Complainant claims that this e-mail indicator has been used to steal stock from Complainant. Given the fraudulent activity through the associated <telefonica.uk.com> e-mail account, a finding of bad faith is warranted.
In light of e-mail correspondence from the named Respondent claiming the name listed in the WHOIS has nothing to do with the <telefonica.uk.com> domain name, Complainant argues that these circumstances are further indication of bad faith as the true Respondent has apparently engaged in identity theft in furtherance of this scheme.
B. Respondent
Respondent failed to submit a formal response. However, the FORUM is in receipt of an e-mail sent from Respondent in which Respondent claims he was not the person who registered this domain name.
Preliminary Issue: Redaction of Respondent’s Identity
In an e-mail sent to the FORUM on September 25, 2014, Respondent contends that he knows nothing about the <telefonica.uk.com>, and that this proceeding must be against the wrong person. As Respondent appears to be is a victim of identity theft, the Panel has redacted Respondent’s personal information from the decision to prevent further victimization of Respondent. See Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellzfargo.com>, FA 362108 (Nat. Arb. Forum Dec. 30, 2004) and Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellsfargossl>, FA 453727 (Nat. Arb. Forum May 19, 2005) (The panels omitted the respondents’ personal information from the decisions in an attempt to protect the respondents who claimed to be victims of identity theft from becoming aligned with acts the actual registrants appeared to have sought to impute to the respondents.).
Complainant, Telefonica S.A, is the owner of the TELEFONICA mark as demonstrated by trademark registrations with the United Kingdom’s Intellectual Property Office (“UKIPO”) (See, e.g., Reg. No. 2,571,343 registered June 5, 2011). Complainant uses the TELEFONICA mark for telecommunications services, with a major presence in Europe and Latin America.
Respondent is using the disputed domain name as a guise to appear affiliated with Complainant by using an e-mail address with the @telefonica.uk.com e-mail string associated with the <telefonica.uk.com> domain name. Complainant claims that this e-mail indicator has been used to steal stock from Complainant. The disputed domain name was registered January 29, 2014.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant uses the TELEFONICA mark for telecommunications services, with a major presence in Europe and Latin America. Complainant has rights in the TELEFONICA mark under Policy ¶ 4(a)(i) through trademark registration with the UKIPO. See Royal Bank of Scot. Group plc v. Demand Domains, FA 714952 (Nat. Arb. Forum August 2, 2006) (holding that registration of the PRIVILEGE mark with the United Kingdom trademark authority sufficiently established the complainant’s rights in the mark under the Policy).
The <telefonica.uk.com> domain name is identical to the TELEFONICA mark under Policy ¶ 4(a)(i) as the mark is fully included in the domain name, and the suffix “.uk.com” is irrelevant. See Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Respondent has no rights or legitimate interests in the disputed domain name. The WHOIS record shows that the registrant is not commonly known by the <telefonica.uk.com> domain name. The Panel finds that Respondent is not commonly known by the <telefonica.uk.com> domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent has failed to make demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The domain name resolves to a sparsely inhabited page depicting a “names.co.uk a Namesco Brand” banner and a domain name search bar, seemingly affiliated with the domain name registrar. Complainant claims that Respondent’s use for this domain name is less reliant on the resolving page than derived from the associated @telefonica.uk.com e-mail suffix that comes with the domain holding, which causes confusion with Complainant’s true e-mail suffix @telefonica.com. Complainant claims this e-mail indicator has been used to steal stock from Complainant. The use of a disputed domain name for fraudulent or illegal purposes shows that the respondent does not have rights or a legitimate interest in the disputed domain name. See Cubist Pharmaceuticals, Inc. v. Gregory Stea, FA 1550388 (Nat. Arb. Forum May 5, 2014) (the respondent lacked rights and legitimate interests in the disputed domain name where the respondent used the domain name to send e-mails to various IT hardware suppliers in an attempt to impersonate the complainant and defraud the suppliers). Respondent’s use of the disputed domain name in furtherance of fraudulent activity under the guise of the disputed domain name and associated @telefonica.uk.com e-mail is not a bona fide offering of goods or services, or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and (iii).
Policy ¶ 4(a)(iii) bad faith exists where a respondent uses the disputed domain name for fraudulent or illegal activity. See National Oilwell Varco, L.P. v. Craig Wood / NOV, FA 1575951 (Nat. Arb. Forum September 22, 2014)(“Respondent’s use of the <nov-inc.com> domain name to commit a commercial fraud while purporting to act in the name of Complainant, . . demonstrates bad faith in the registration and use of the domain name.”). .
In light of the e-mail correspondence from the named Respondent claiming the individual listed in the WHOIS has nothing to do with the <telefonica.uk.com> domain name, Respondent has apparently engaged in identity theft which is a further indication of bad faith under Policy ¶ 4(a)(iii). See Morgan Stanley v. John Doe, FA 1456105 (Nat. Arb. Forum Oct. 4, 2012) (“As the named Respondent is a victim of identity theft, the identity theft is evidence that the actual Respondent of the disputed domain name registered and uses the domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”); see also Bank of America Corp., v. John Doe, FA 1456105 (Nat. Arb. Forum Oct. 9, 2014) (“The Panel finds that registrant’s use of a false identity is evidence of bad faith pursuant to Policy ¶ 4(a)(iii) and finds the disputed domain name has been registered and is being used in bad faith.”).
Complainant having established all three elements required under the CentralNic Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <telefonica.uk.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 30, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page