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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dolphin Telecommunications Limited v. Dolphin Express Couriers, Jason Beatty and Mark Morton
Case No. D2001-0034
1. The Parties
The Complainant is Dolphin Telecommunications Limited, a company incorporated in England with its registered office at The Crescent, Jays Close, Basingstoke, Hampshire, RG22 4BS, United Kingdom.
The Respondent in the alternative is Dolphin Express Couriers, of 2 Swetmount Avenue, Dundrum, Dublin, 14, Republic of Ireland, the registrant of the domain name <dolphinexpress.net>, Mark Morton, the administrative and billing contact for the domain name <dolphinexpress.net> or Jason Beatty, as the person with whom the Complainant has corresponded in connection with the domain name <dolphinexpress.net> ("the Respondent").
2. The Domain Name and Registrar
The domain name, which is the subject of the Complaint, is <dolphinexpress.net> registered on May 30, 2000.
The Registrar of the domain name is Network Solutions, Inc. of 505 Huntmar Park Drive, Herndon, Virginia, 20017, USA.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
(a) The Complainant initiated the proceeding by the filing of a Complaint, which was received by the WIPO Arbitration and Mediation Center ("the Center") via e-mail on January 8, 2001, and in hard copy on January 10, 2001. The Complainant elected to have the dispute decided by a single member Administrative Panel.
(b) The Center verified that the Complaint satisfies the formal requirements of the ICANN 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 of WIPO ("the Supplemental Rules") as required by Paragraph 4 (a) of the Rules and Paragraph 5 of the Supplemental Rules. Payment in the required amount to the Center has been made by the Complainant.
(c) On January 26, 2001, the Center transmitted via e-mail to NSI a Request for Registrar Verification in connection with the Complaint. On January 29, 2001, NSI transmitted to the Center, via e-mail, Registrar's Verification Response confirming that the registrant is "Dolphin Express couriers" of 2 Swetmount Avenue, Dundrum, Dublin, 14, Republic of Ireland and that the contact for both administrative and billing purposes is "Mark Morton".
(d) On February 5, 2001, the Center transmitted the Notification of Complaint and Complaint to the Respondent in accordance with the domain name registrant, administrative contact, technical contact, zone contact and billing contact details provided by NSI. The Center advised that the Response was due by February 24, 2001. On the same day, the Center transmitted by fax and by mail copies of the foregoing documents to the Respondent.
(e) No Response was received from the Respondent by the due date of February 24, 2001. On March 8, 2001, Notice of Respondent Default was sent to the Respondent using the same contact details and methods as were used for the Notification of Complaint. No reply by the Respondent to the Notification of Respondent Default was received.
(f) Having received a Statement of Acceptance and Declaration of Impartiality from the Panelist, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date on March 19, 2001. The Projected Decision Date was April 2, 2001. The Panelist sought an extension in accordance with Paragraph 15 (b) of the Rules.
(g) Having reviewed the communication records in the case file, the Panelist finds that the Center has discharged its responsibility under Paragraph 2 (a) of the Rules "to employ all reasonably available means calculated to achieve actual notice to Respondent". As such, the Panelist’s decision is based upon the Complaint, the Policy, the Rules and the Supplemental Rules without the benefit of any Response from the Respondent.
4. Factual Background
- The Complainant
The Complainant is Dolphin Telecommunications Limited which is "part of" Dolphin Telecom Plc, a public mobile radio network operator in Europe with approximately 265,000 subscribers in the United Kingdom, France, Belgium, Germany, Spain and Portugal and with licenses covering a population of more than 248 million.
Dolphin Telecom Plc is in turn an 81.5% owned subsidiary of Telesystem International Wireless ("TIW"). TIW is a global mobile communications operator which develops, acquires, owns and operates wireless telecommunications networks in developing and developed markets throughout the world with over 3.3 million subscribers. This company's shares are listed on the Toronto Stock Exchange and NASDAQ.
The Complainant markets a mobile communications service under the "ExpressNet" brand name based on the "TETRA" standard (derived from TErrestrial Trunked RAdio). The Complainant announced its plans for the summer release of its "ExpressNet" service, the first commercially available integrated voice and data mobile communications network based on the TETRA standard, on May 12, 1999. It was awarded a license from the Department of Trade and Industry and launched initial services in August 1999, in the United Kingdom.
The Complainant registered the Domain Name <dolphin-express.net> on September 13, 1999.
On September 17, 1999, the Complainant launched a major advertising campaign to promote its new mobile communications network. The campaign was stated to cost Ј7 million and to feature advertising in trade and national press, a national poster campaign and national television. It was stated that the advertisements would be shown across terrestrial, cable and satellite channels in the UK.
The Dolphin "ExpressNet" service has been taken up by major organizations including the Army, the Metropolitan Police, the BBC and the South Yorkshire Police. Press releases relating to the BBC and South Yorkshire Police, which predate the Respondent's domain name registration, were made on March 22, 2000, and April 14, 2000, respectively.
The "ExpressNet" service is frequently preceded by the word "Dolphin" which is a registered trademark of Dolphin Telecom Plc. The Panelist presumes that Dolphin Telecom Plc is the parent company or an affiliate of the Complainant. The domain name is said to reflect the fact that it is Dolphin's "ExpressNet" service. There is no evidence of a license although presumably the Complainant uses the word "Dolphin" as part of its corporate name and as a trade mark by way of express or implied license from the trade mark owner. The Complainant's press releases and accompanying publicity material refer variously to "ExpressNet", "ExpressNet from Dolphin", "the Dolphin ExpressNet service" and "Dolphin's ExpressNet service".
The "Dolphin" trademark is registered throughout the European Union. In particular, the mark "Dolphin" is registered in classes 38 and 42 in Great Britain and the Republic of Ireland.
The class 38 registration is in respect of:
"Cellular telephone communications; communications by computer terminals; communications by telephone; computer aided transmission of messages and images; electronic mail; facsimile transmission; information about telecommunications; messages sending; paging services; rental of message sending apparatus; radio broadcasting; telecommunication services; telegraphy services; telephone services; wire service".
The class 42 registration is in respect of:
"Provision of computer database services; leasing access time to computer databases; all in connection with or using telecommunications equipment".
- The Respondent
According to the WHOIS database, the Respondent's domain name <dolphinexpress.net> was registered by an individual named Mark Morton on May 30, 2000.
The WHOIS database also identifies a domain server, "DomainsAreFree", with which the disputed domain name was parked as soon as it was issued.
On June 2, 2000, two days after the domain name was registered, the Respondent sent an e-mail to the Complainant, which reads as follows:
"My company is receiving many of your customers inquiries every day via our new web site <dolphinexpress.net>.
It appears many of your Internet customers are leaving out the dash-mark when sourcing your company domain name <dolphin-express.net>.
As we are also receiving many e-mails I have asked our webmaster to temporarily cease our e-mail address email@example.com until our site is ready because of the confusion.
As my web site is still under construction I have no problem forwarding the e-mails I receive in the short term when I re-activate our e-mail address, so could you please contact me in relation to what address your company would like me to send your customers correspondence to".
This letter is in almost identical terms (save as to subject matter) to letters sent by a Jason Beatty in Complaints considered by the Panelist, James Gordon Fogo, in Robert Barry & Co. Ltd. v. Jason Beatty (WIPO Case No. D2000-1756) in a decision dated February 5, 2000, and by the Honorable Paul. A. Dorf (ret) as panelist in a decision dated April 24, 2000, Bloomberg L.P. v Bloom-Berg-Dom, Jason Beatty and/or Jason Bloom (Forum File Number No.: FA0003000094358, National Arbitration Forum).
Mr. Beatty's e-mail in this case was addressed to Kerri Cowlam, the Administrative Contact for the Complainant's registration of the <dolphin-express.net> domain name.
Ms. Cowlam responded to Mr. Beatty's e-mail by e-mail of June 2, 2000, thanking Mr. Beatty for his e-mail and for bringing the "problem" to her attention and inquiring whether "you are willing to possibly sell us your domain name <dolphinexpress.net> and if so at what cost". Mr. Beatty responded to Ms. Cowlam by undated e-mail to the effect "my partner is back from his holiday on Wednesday I will discuss this problem with him and your question in relation to our web site". By e-mail of June 7, 2000, from Mr. Beatty to Ms. Cowlam, Mr. Beatty states "I have discussed with my partner your interest in our domain name, we would consider selling it and changing our site to our indigenous dolphinexpress. i.e. to avoid any further confusion if you could cover our costs for recent printed material which has our new dot com details totaling Ј1650". Ms. Cowlam responded by e-mail of June 12, 2000, stating that "we would be very interested in purchasing your domain name" and asking "how you wish me to proceed with this". In an e-mail of June 13, 2000, from Mr. Beatty to Ms. Cowlam, Mr. Beatty states "you can either get your solicitor to contact ours ...or else you can forward us a cheque directly and we will dispatch the documents".
Ms. Cowlam referred this matter to the Complainant's in-house counsel, Michele Theaker, by e-mail of June 15, 2000, noting "obviously this is a very urgent matter as we may be losing business all the time customers are going to the wrong website!!" Ms. Theaker then e-mailed Mr. Beatty on June 21, 2000, referring to his earlier correspondence with Ms. Cowlam regarding the purchase of the domain name, indicating that Simon Morrissey of the Law Offices of Marcus J. O'Leary will be acting for the Complainant and requesting contact details for "Dolphin Courier's legal advisers". "Jason" responded to the e-mail from Ms. Theaker by e-mail of June 21, 2000, to the effect "The owner of the company Mark morton is back from holidays next week I will get him to contact you and your solicitors". There is an e-mail from "David" to Ms. Theaker of June 22, 2000, in relation to "DOMAIN REGISTRANT – MARK MORTON, DOLPHIN EXPRESS COURIERS 2 SWEETMOUNT AVENUE, DUNDRUM, DUBLIN 14" stating that the solicitors for transfer are Romaine Scally & Co. No further correspondence is exhibited to the Complaint.
5. Parties' Contentions
The Complainant contends that the Respondent's domain name <dolphinexpress.net>:
(i) is identical to the Complainant's domain name <dolphin-express.net> (expect in respect of the hyphen separating "dolphin" and "express")
(ii) incorporates the registered trade mark "Dolphin"; and
(iii) uses the Complainant's trademark "ExpressNet".
The Complainant also relies on the e-mail from Mr. Beatty to Ms. Cowlam of June 2, 2000, set out above, as an admission by the Respondent that the name is confusingly similar.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name and appears to have registered it in order to sell it for profit to the Complainant.
The Complainant notes that the Respondent's domain name was still "parked" on December 20, 2000, with "DomainsAreFree". Reference is made to the e-mail from Mr. Beatty above in which he represents to the Complainant that his web site was under construction and that his e-mail address was only temporarily ceasing to operate. The Complainant infers no business utilizing this domain name is apparent.
Further, the Complainant refers to the assertion of a legitimate business as part of a system used by the Respondent to inflate the price that the Respondent asks for the domain name of target companies, referring to the two decisions cited above. The Complainant infers, in this case, that the business Jason Beatty purports to run is a courier business and that his partner, a Mark Morton, may or may not exist. The Complainant notes that Mr. Morton operates from the same address as Mr. Beatty.
Further, the Complainant notes that the Respondent appears to operate a system in which he registers domain names, the same or confusingly similar to existing and established businesses, either in his own name or using an alias or another person's name, represents that he and a partner legitimately run or are setting up a business with that name, parks the domain name and e-mails the target business stating that there is confusion over the domain names and asking the target company to contact him ostensibly to resolve the "confusion" but ultimately to induce the target company to pay a premium in order to acquire the parked domain name. The compensation sought is usually to cover business expenses in changing stationery or brochures. To confer apparent legitimacy to the transaction, the Respondent also instructs a solicitor to help with the transfer but only gives the solicitor very restricted powers.
The complainant asserts that the figure of Ј1650 is a sum considerably in excess of the actual transfer costs.
Lastly, the Complainant asserts that the domain name was registered and is being used in bad faith.
The Complainant relies upon the following:
(1) the modus operandi of the Respondent namely:
(i) identifying existing (target) domain names/marks;
(ii) registering an identical or confusingly similar domain name;
(iii) parking the domain name;
(iv) contacting the target company very shortly afterwards to report confusion;
(v) use of standard format email to contact target company;
(vi) use of another name/partner to register domain name or provide spurious support for use of mark/domain name;
(vii) use of a fictitious business to "justify" premium over transfer costs;
(viii) use of a solicitor with very restricted powers to appear to be bona fide.
(2) The fact that the Respondent registered the domain name on May 30, 2000, and only two days later, on June 1, 2000, contacted the Complainant claiming that his company was "receiving many of your customers enquiries every day" which cannot be true since the Respondent had only had the domain name for 2 days from the registration date before contacting the Complainant. (This element was present in both the Bloomberg and Robert Barry cases).
(3) From these matters, the Complainant concludes that the Respondent is trying to force the Complainant to negotiate the purchase of the domain name from the Complainant. The circumstances indicate that the Respondent registered the domain name for the primary purpose of selling or otherwise transferring it to the Complainant for valuable consideration in excess of the registration costs.
(4) The communication sent by the Respondent is asserted to amount to an instrument of fraud or deception as described in the judgment of the Court of Appeal in British Telecommunications Plc and others v. One in a Million Limited and others (1998), 4 All ER 476.
B. The Respondent
There is no evidence from the Respondent.
6. Discussion and Findings
NSI indicates that the Respondent's domain name registration is subject to NSI Service Agreement Version 5.0 by which the Policy applies to the domain name. Paragraph 4.a. of the Policy requires the Complainant to make out three elements:
A. the "domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights"
The domain name in issue is <dolphinexpress.net>.
The Complainant has used the mark "ExpressNet" in connection with the mobile communications service it has marketed and sold in the United Kingdom since 1999. The sale of this system to the BBC and South Yorkshire Police suggests that the Complainant has established rights by way of reputation in its unregistered mark.
The trade mark "Dolphin" is registered throughout Europe including Great Britain and the Republic of Ireland by Dolphin Telecom Plc, a company presumed to be the Complainant's parent company or an affiliate, in relation to, inter alia, telecommunications services. It is further presumed that the Complainant uses the name "Dolphin" as part of its company name and more generally as a trademark by way of express or implied license from Dolphin Telecom Plc as trademark owner.
The Complainant registered the domain name <dolphin-express.net> on September 13, 1999, and has used that expression in its advertising to describe its mobile communications service.
The Respondent's e-mail to the Complainant of June 1, 2000, states that the Respondent is receiving "many of your customers inquiries every day via our new web site <dolphinexpress.net>", that it "appears many of your Internet customers are leaving out the dash mark when sourcing your company domain <dolphin-express.net>" and to "the confusion".
In these circumstances, the Panelist finds that the domain name <dolphinexpress.net> is "confusingly similar" to a trade mark or service mark in which the Complainant has rights albeit that the trade mark or service mark is a combination of the company name and registered trade mark "dolphin" and the unregistered trade mark "ExpressNet".
B. the Respondent "has no rights or legitimate interests in respect of the domain name"
There is no evidence that the Respondent has rights or legitimate interests in respect of the domain name.
If the Panelist finds any of the matters set out in Paragraph 4.c. of the Policy to be proved, based on the evaluation of all the evidence, that is said to demonstrate the Respondent's rights or legitimate interests to the domain name. There is no evidence, before any notice to the Respondent of the dispute, of any use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services in terms of Paragraph 4.c. (i) of the Policy. Further, there is no evidence that the Respondent has been commonly known by the domain name, even if it acquired no trade mark or service mark rights in terms of Paragraph 4.c.(ii) of the Policy. Lastly, there is no evidence that the Respondent is making a legitimate non commercial fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or tarnish the trade mark or service mark at issue in terms of Paragraph 4.c.(iii) of the Policy.
There is no other evidence suggesting that the Respondent has rights or legitimate interests in respect of the domain name.
C. the "domain name has been registered and is being used in bad faith"
If the Panelist finds evidence of any of the matters set out in Paragraph 4.b. of the Policy that shall be evidence of registration and use of a domain name in bad faith.
From the circumstances recited above, it is apparent that the domain name is likely to have been registered primarily for the purpose of selling it to the Complainant who is the owner of the trade mark or service mark for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name.
There is no evidence that the domain name is connected with a legitimate business enterprise. Indeed, it is "parked" with "DomainsAreFree".
There is a striking similarity in the approach Mr. Beatty, as the apparent representative of the Respondent, employed in the Robert Barry and Bloomberg cases referred to above.
The amount of Ј1650 is in excess of the cost of transfer of the domain name and there is no evidence to support expenditure on "recently printed material, which has our new dot com details". As such, bad faith appears to be made out under Paragraph 4.a.(iii) in reliance on Paragraph 4.b. (i) at least.
Accordingly, the Panelist finds that the Respondent registered the domain name <dolphinexpress.net>, which is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name and that the domain name has been registered and is being used in bad faith in accordance with Paragraph 4.a of the Policy. In accordance with that finding, the Panelist orders that the domain name <dolphinexpress.net> be transferred to the Complainant.
Dated: May 4, 2001