There were two Complainants Phones4U Limited and Mobileserv Limited of Staffordshire UK.
Here are the relevant fact and findings by the three member panel:
“”Each of the Complainants is an English company within the Phones4U group of companies (“Group”), trading in the UK under the “Phones4U” name since May 1995, whereby Mobileserv Limited is the immediate parent company (“Parent”) of Phones4U Limited, which is the primary trading entity within the Group, being a retailer of mobile phones and mobile phone services in the UK.
Through the Parent, the Complainants own and/or have rights in various registrations for the PHONES4U trade mark in Europe and the UK, including a Community Trade Mark for a PHONES4U device mark registered on February 11, 2000, and two registrations in the UK for a word mark registered on November 10, 2006, and a device mark registered on October 22, 2010. Phones4U Limited has also held various domain name registrations incorporating PHONES4U, since May 30, 1997, including <phones4u.co.uk>, <phone4u.co.uk>, <phones4ufinance.com> and <phones4udirect.com>.
The Disputed Domain Name was registered on December 21, 2003, by a registrant identified by the Respondent as Ultimate Search Inc.
“”The Complainants contend that the Respondent is not connected or associated with either of the Complainants’ businesses and is not on any other basis licensed or authorised to use its PHONES4U mark. ”
“Further, the Complainants submit that the Respondent is not known by the “Phones4U” name. Accordingly, the Panel finds that the Complainants have made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name and therefore the Respondent now has the burden of proving that it does possess such rights or legitimate interests.”
“The Panel accepts that the Complainants have not licensed or otherwise authorised the Respondent to use the PHONES4U trade mark.”
“The Panel also notes that there is no evidence, whether put forward by the Respondent or otherwise, that the Respondent has been commonly known by the Disputed Domain Name, and finds that the use of the Website as a “link farm” to host numerous sponsored links precludes any argument that the Disputed Domain Name is being used on a noncommercial basis. ”
“As such, the Respondent needs to demonstrate that it acquired rights or legitimate interests in the Disputed Domain Name through use of the Disputed Domain Name in connection with a bona fide offering of goods or services.”
“The Panel accepts that use of a website to host PPC sponsored links is capable of conferring rights or legitimate interests in the relevant domain name on the registrant and/or website operator, particularly where the domain name in question consists of a dictionary or generic word or phrase, and the domain name is reasonably related to the content of the links hosted ”
“On the facts of the present case, the Disputed Domain Name arguably consists of a generic phrase (“phones for you”), whereby the phonetic abbreviation of the words “for you” to “4u” (which itself, is a generic or common abbreviation) does little if anything to distinguish the original phrase. ”
“The sponsored links displayed on the Website also largely relate to this phrase, the majority being links to websites concerning mobile phones or mobile phone services. ”
On the issue of bad faith the panel found the Complainants did not meet their obligations.
“to make good on this claim, they must satisfy the Panel that the Respondent knew or was likely to have known of the Complainants’ trade mark at time of registration of the Disputed Domain Name. Although the Complainants contend that both the PHONES4U trade mark and “Phones4U” trade name were very well-known at the time that the Disputed Domain Name was registered, the Panel notes that no evidence has been adduced by the Complainants in support of such contentions, insofar as they extend beyond the UK.”
“Absent such evidence, and in light of the Respondent’s assertion of good faith registration as supported by a record of bona fide registration of domain names consisting of generic or descriptive words or phrases, the Panel is unable to find that the fame of the PHONES4U mark was such that the Respondent (a US-based entity) was more likely than not aware, or had knowledge, of the Complainants’ mark at the time of registering the Disputed Domain Name. ”
“Further, the Panel rejects the Complainants’ suggestion that proof of bad faith use obviates the need to prove bad faith registration, which in the Panel’s view, is a requisite element that the Complainants must prove independent of bad faith use.
The Panel accordingly finds that the Complainants have failed to discharge the burden of proving that the Respondent registered the Disputed Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has not been satisfied.”
“As the Panel finds that the Complainants have failed to discharge their burden of proof under paragraph 4(a)(iii) of the Policy in respect of bad faith registration, it considers it unnecessary to proceed to consider the satisfaction or otherwise of the requisite elements regarding bad faith use.”
“For all the foregoing reasons, the Complaint is denied.”
In a very moving and well thought out dissent panelist Mr. Donahey wrote:
“I respectfully dissent.”
On a 3-person UDRP panel, the presiding panelist at WIPO is paid $1,500, and each co-panelist receives $750.
Thus, M. Scott Donahey’s 3-word dissent was $250 per word.
Nice work, if you can get it!
George
Your comment reminds me of the guy who sold men.com to Rick Schwartz for $15K back in the day.
He told me it was $5K a letter how could he turn it down.
The company is worth £billions – they should’ve (reg’d) bought the name years ago. They spend millions on TV ads every year; I hate to think how much traffic they’ve lost to the .com over that time.
I am actually surprised marchex hung onto this
I feel if a lone domainer owned this they would have had the decision made against them, becuase marchex are so big and john berryhill so respected this won it
2003 reg, it’s not generic, lets not kid ourselves
just my opinion
whats more if the complainant had done homework they would know was a dropcatch and was registered previously, prob caught because of traffic etc and no doubt won at auction
not sure when marchex bought their huge portfolio from yun ye but if after reg date then he caught it not them or one of drop houses
Another baseless claim horribly presented made this yet anotherwalk in the park for berryhill. Seems for every decent lawyer out there there are thousands of ambulance chasing wannabes. Phones for u should retain a new legal team
in fact I didn’t go far enough
this is a terrible decision
I am a developer and domainer and on side of domainers when fair but this is a blatant tm violation
I just visited page phones4u.com and it has a link to phones4u.co.uk LOL
actually worded phones4u co uk !
it is a made up brandable and they have old trademarks.
this is where wipo is an ass I think. they have the rule you can have a parked page with links as long as relevant but then that means you have a chance of getting a tm link even when you dont plan or want to and may have a real generic
but its crazy you could have a coming soon page or a holding page meaning no harm and really planning to develop in future and lose it beacuse of that
the sooner this quango is shut down the better along with icann
@ winning I agree, any half decent lawyer could have won this for complainant imo, that is if the field is level and the panel are knowledgable and honest too! that is not always the case as we know
unfortunately for complainant I don’t think they can take to wipo again, its a one shot thing
they will have to go to court. then it gets REALLY expensive
but, this was no baseless claim, as I already explained I think
anyway, it’s rare I find myself defending a complainant lol, it just sows what a mess it is over there at wipo. they seem to make it up as they go along
“Thus, M. Scott Donahey’s 3-word dissent was $250 per word.”
If it wasn’t “respectful”, it would have been $375 per word.
Slack-jawed, in amazement!… I wonder if this decision would have been the same
if it were a US company who had filed a TM at the USPTO.
Hmmm…
@Guy – You’re right. Whoever is advising the complainant is probably the company lawyers.
Hey guys. The phone company chose an absolutely HORRIBLE mark. It should come as no big suprize that when u use a mark that corresponds to the product the mark is associated with that others CAN and WILL use your mark. The only BAD decision here was the one made by phones for u thinking they had a chance at the name or to protect their completely descriptive mark. They need new lawyers not to assit them in getting this name but to assist them in knowing when they actually have a chance to get a name like this. The case had no chance, none at all and it had nothing to do with the fact that it was marchex or berryhill, nothing to do with money or respect, it has to do with the law. Phones4U is not a protectable mark for selling phones…..plain and simple….just like most lawyers.
With respect Mr Mark youre talking rubbish. Toys R Us is exactly the same as Phones 4 U in terms of putting the main product in the company name.
Also I have to agree with ri.sk – had this been toysrus with the exact same case for toysrus.com you can bet your life the decision would have gone the other way.
The declining of $20k for a domain of no notable value rather suggests that Complainant is being taken advantage of.
Surely more attention should be paid to pricing in determining whether seller’s actions amount to reasonable speculation or go beyond.
Berryhill –
Be honest, during your closing argument you stood up in the middle of the room, slowly pulled out a black leather glove from your pocket, looked the three member panel deep in the eyes and said:
IF THE GLOVE DONT FIT, YOU MUST ACQUIT!
Despite the majority opinion stating:
“On the facts of the present case, the Disputed Domain Name arguably consists of a generic phrase (“phones for you”), whereby the phonetic abbreviation of the words “for you” to “4u” (which itself, is a generic or common abbreviation) does little if anything to distinguish the original phrase. ”
… I am not fully convinced “phones 4 u” is truly a “generic phrase” (especially given the historic use of the phrase).
I can imagine relevant arguments in support of both opinions (generic vs. non-generic) and wonder how much time/effort (if any) was spent by Complainant contending the uniqueness/brand-able nature of the phrase.
Steve
@back
You are wrong. I hope!
LOL @ Toys.
That made my day. Yep maybe I am, I hope so too.
Yep good win Mr Berryhill – this one wasnt so straightforward by the look of it so congratulations are in order. Some of those other recent ones however were no sport at all 🙂
Who are these fools that keep taking cases to WIPO or wherever that are almost destined to lose? Some of those losing complainants legal teams should get reprimanded by the Law Society or whoever it is who craps on lawyers for blatant incompetence.
“Surely more attention should be paid to pricing in determining whether seller’s actions amount to reasonable speculation or go beyond.”
You’d be surprised how many complainants make that kind of argument. I’ve had cases in which the complainant offers, say, $10K for a domain name, gets a counter of $20K, and then the complainant goes to the UDRP.
UDRP panels are not price arbitration boards. There is not a magic number at which legitimate speculation becomes cybersquatting. Either someone acted with the specific intent to exploit a trademark known to them, or they didn’t.
Incidentally, I thought the Complainant’s attorneys did an above average job on this one. It was well-written and competently argued.
Some UDRP complaints are just awful, and LindaM is right about them not being sporting. The recent BMA.com case, for example, was obviously written by some inside IT guy at the complainant company who had no idea what he was doing, and really just didn’t understand the UDRP. It didn’t help that the complaint itself was something like 15 sentences long, but then again English was obviously not his first language.
This one was pretty good, and actually fairly sophisticated. The summaries of the arguments that you see in UDRP decisions omit a lot of material, if the panel decided that material was not relevant. But, a priori, you never really know what a panel is going to focus on.