WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Deutsche Telekom AG v. Andrew Miller
Case No. D2008-0296
1. The Parties
The Complainant is Deutsche Telekom AG, of Munich, Germany, represented by Lovells, Germany.
The Respondent is Andrew Miller, of Utah, United States of America.
2. The Domain Names and the Registrar
The disputed domain names:
, , , , , , , , , , , , (collectively “the Domain Names”), are registered with F Pty Limited (“the Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 27, 2008. On February 29, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On March 3, 2008 the Registrar transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details for the Domain Names. The Center verified that the Complaint satisfied 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 WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 5, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 25, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 26, 2008.
The Center appointed Warwick Smith as the sole panelist in this matter on April 3, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
In the absence of any response, the Panel has checked the record to ensure that the Center has discharged its responsibility to notify the Complaint to the Respondent under paragraph 2(a) of the Rules. The Panel notes that the courier pack addressed to the Respondent could not be delivered, and that an attempt to transmit the Complaint and Notice of Commencement of Administrative Proceeding to the Respondent by facsimile, was also unsuccessful. The Center’s email transmissions to the various “postmaster” email addresses were all returned with “permanent fatal error” reports. However, the copy of the Complaint and Notice sent by email to the Respondent’s “gmail” address provided in the Whois information for the Domain Names, seems to have been transmitted successfully, and it therefore appears that the Respondent has had actual notice of the Complaint. In any event, the Panel is satisfied that the Center has “employed reasonably available means calculated to achieve actual notice to the Respondent”, and has therefore complied with its obligations under paragraph 2(a) of the Rules.
4. Factual Background
The following facts are taken from the uncontested allegations in the Complaint.
The Complainant
The Complainant is Europe’s largest telecommunications company. It has an established presence in the major economic centers of the world, serving customers in about 50 countries through regional units, with a focus on the European and United States markets. The Complainant’s subsidiary T-Mobile International AG & Co KG (“T-Mobile”) is one of the world’s leading companies in mobile communications. T-Mobile also concentrates on the European and United States markets. By the end of the third quarter of 2006, T-Mobile had more than 106 million customers.
“T-Mobile” is the company name under which the Complainant’s business in the mobile communications sector is conducted. The Complainant operates websites at “” and “”. The Complainant has spent a considerable time and money developing the “T-Mobile” brand, and the public has come to associate that expression exclusively with the Complainant, its subsidiaries, and businesses. The Complainant therefore has substantial goodwill arising from the use of the trade mark T-MOBILE.
The Complainant uses the brand “T-Online” to represent its Internet service provider “T-Online”, which is one of the leading Internet providers of broadband Internet access on the European market. The Complainant also operates websites at “”, “”, “”, “”, “”, and “”.
The Complainant’s Trade Marks and Service Marks
The Complainant has a large number of national, Community, and international trade marks reflecting the term “T-Mobile”. The Complainant’s trade mark registrations include the mark T-MOBILE, registered in the United States of America under registration number 2282432, with effect from February 27, 1997. This mark is registered for various goods and services in international classes 9, 14, 16, 18, 25, 28, 36, 37, 38, 41, and 42.
In addition, the Complainant is the registered proprietor of the mark T-ONLINE on the principal register maintained by the United States Patent and Trade Mark Office, in respect of a variety of goods and services in international classes 9, 14, 16, 18, 25, 28, 36, 37, 38, 41, and 42. This application was filed on November 2, 1995, and the mark consists of the capital letter “T”, separated from the word “Online” by a line of three small dots or squares, and with one similar dot or square before the “T” and one after “Online”.
The Respondent and the Domain Names
All of the Domain Names were registered on May 1, 2007.
According to searches carried out by the Complainant on August 28 and August 31, 2007, the Domain Names were then registered to a company called KerryWeb Enterprise Inc, of Los Angeles, California, United States of America. On September 26, 2007, the Complainant’s representative sent a cease and desist letter to KerryWeb Enterprise Inc, drawing attention to the Complainant’s claimed rights in the trade marks T-MOBILE and T-ONLINE. The Complainant’s representative proposed that KerryWeb Enterprise Inc should assign the Domain Names to the Complainant, and refrain from registering any further domain names containing either of the phrases “T(-)mobile” and/or “T(-)online”. The Complainant’s representative sought a response by October 9, 2007.
The Complainant’s representative does not appear to have received a reply to this letter. Instead, there was a further change in the registrant of the Domain Names: Whois searches run by the Complainant on November 13, 2007, show that by then the registrant of all of the Domain Names was Christinas Kerr of New York City, United States of America. The Complainant’s representative sent a cease and desist letter to this registrant, on November 14, 2007. Again, the letter drew the registrant’s attention to the Complainant’s T-MOBILE and T-ONLINE trade marks, and proposed the assignment of the Domain Names to the Complainant and an agreement by the registrant not to register any further domain names containing the phrases “T(-)mobile” and/or “T(-)online”. A response was sought by November 20, 2007.
Again, it appears that no response was received. The present administrative proceeding was commenced on February 27, 2008.
According to the Complaint, the Domain Names resolve to websites where sponsored links, in the German language, are displayed. Many of the sponsored links refer to the Complainant’s competitors in the mobile telecommunications sector – for example, Debitel and Vodafone.
The Panel has himself visited the websites to which the Domain Names resolve. All appeared in the English language, and all contained sponsored links to various third party websites. Some links were to sites which appeared to offer products offered by the Complainant’s competitors. Some click-on links labeled “T-mobile …” took the site visitor to sites offering products generically, with no particular reference to the Complainant or its products. Others offered totally unrelated products such as T-shirts.
5. Parties’ Contentions
A. Complainant
The Complainant contends:
1. The Domain Names are confusingly similar to the Complainant’s T-ONLINE and T-MOBILE trade marks. In particular, the following Domain Names are confusingly similar to the Complainant’s T-ONLINE mark:
2. The following Domain Names are confusingly similar to the Complainant’s T-MOBILE trade mark:
3. Each of the Domain Names incorporates, almost identically, one of the Complainant’s above-mentioned marks. To those marks, there have been added expressions such as “com”, “net”, and “de”, which are typically employed by typosquatters. The addition of these expressions does not minimize the risk of confusion, because Internet users might think “”, and “” stand for sub level domains. As the Panel noted in Deutsche Telekom AG v. WWW Enterprise, Inc,WIPO Case No. D2005-0311, “such elements are commonly used in domain names (although succeeded or preceded by a dot) and therefore do not have any distinguishing capacity”. More generally, “adding a common or a generic term to a well-known mark does not sufficiently distinguish the domain name from Complainant’s trade mark. This view has been expressed repeatedly by other Panels …(Nokia Corporation v. Horoshiy Inc and LaPorte Holdings,WIPO Case No. D2004-0851).”
4. The use or absence of hyphens in domain names “does not change the likelihood of confusion” (citing BIC Deutschland GmbH & Co KG v. Paul Tweed,WIPO Case No. D2000-0418).
5. The Respondent has been guilty of typosquatting. Typosquatting, by definition, renders the Domain Names confusingly similar to the Complainant’s marks (citing Dow Jones & Company, Inc. and Dow Jones, L. P. v. Powerclick, Inc,WIPO Case No. D2000-1259).
6. The Respondent has no right or legitimate interest in respect of the Domain Names:
(i) None of the circumstances listed at paragraph 4(c) of the Policy apply.
(ii) The Respondent is not commonly known by any of the Domain Names, and has never been a representative or licensee of the Complainant, or otherwise authorized to use the Complainant’s marks.
(iii) The Respondent does not use the Domain Names for a bona fide offering of goods or services, and is not making a legitimate non-commercial or fair use of them. Many of the sponsored links published on the Respondent’s website refer to products of the Complainant’s competitors.
7. The Domain Names have been registered and are being used in bad faith:
(i) When registering the Domain Names, the Respondent had knowledge of the Complainant’s trade marks and business names. That is evident given the worldwide fame of the Complainant’s marks, and the use of the terms “T-mobile”, “Tmobile”, “T-online”, and “Tonline” in the Domain Names, as well as from the high number of similar Domain Names registered at once. Also, it is reasonable to conclude that only someone who was familiar with the Complainant’s marks would have registered identical domain names (citing British Sky Broadcasting Group Plc v. Mr. Pablo Merino and Sky Services S.A.,WIPO Case No. D2004-0131).
(ii) The Respondent’s registration, without authorization, of domain names which are identical to the Complainant’s famous trade marks and trade name, is, in and of itself, evidence of bad faith (citing PepsiCo Inc v. Paul J Swider,WIPO Case No. D2002-0561).
(iii) It is well settled that the practice of typosquatting, of itself, is evidence of the bad faith registration of a domain name (citing Longs Drug Stores California, Inc. v. Shep Dog,WIPO Case No. D2004-1069, Lexar Media Inc. v. Michael Huang,WIPO Case No. D2004-1039, and Wal-Mart Stores Inc v. Longo,WIPO Case No. D2004-0816).
(iv) The fact that the registrant of the Domain Names changed twice since the Complainant first contacted the then-registered owner of the Domain Names, provides additional evidence of bad faith registration. The Respondent has obstructed and delayed the Complainant’s actions against the registrant, and thus acted in bad faith. The panel in Network Solutions LLC v. KerryWeb Enterprise Inc,WIPO Case No. D2006-1560 said:
“Changing the name of the registrant shortly after the cease-and-desist letter was delivered (and to a name that does not appear to correspond to a legal entity) may also represent an attempt at “cyberyflying”, registration changes designed to hinder the prosecution of a judicial or Policy complaint.”
(v) The Domain Names have also been used in bad faith by the Respondent. The Respondent has attempted to attract, for commercial gain, Internet users to the Respondent’s websites, by creating a likelihood of confusion with the Complainant’s marks. The Respondent has been free-riding on the recognition and goodwill that the Complainant’s T-MOBILE and T-ONLINE trade marks enjoy. That inference is supported by the fact that many of the sponsored links published on the Respondent’s website refer to the Complainant’s competitors. The Respondent has been attempting to generate money by diverting Internet traffic to the Complainant’s competitor’s websites. In Deutsche Telekom AG v. Gary Seto,WIPO Case No. D2006-0690, the panel said:
“In particular, the Panel sees the sponsored links for businesses in the same field as that of the Complainant as an indication of bad faith. Even if the users who access the Respondent’s website may conclude that it is not what they were originally looking for, the Respondent has already succeeded in its purpose of using the Complainant’s mark to attract users for commercial gain, see for example the panel’s observations in Red Bull GmbH v. Unasi Management Inc,WIPO Case No. D2005-0304.”
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. General Principles under the Policy
Under Paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) that the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) that the Domain Names have been registered or is being used in bad faith.
Paragraph 15(a) of the Rules requires the 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”.
If a respondent does not submit a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the rules, the Panel may draw such inferences from a respondent’s failure to comply with the Rules (e.g. by failing to file a response), as the Panel considers appropriate.
B. Identical or Confusingly Similar
The Complainant has proved this part of the Complaint, in respect of all of the Domain Names.
The Complainant has provided satisfactory proof that it is the registered proprietor in the United States of America of the trade mark T-MOBILE, and of a stylized T-ONLINE mark.
Five of the Domain Names incorporate as their dominant components, the expression “tmobile”, (in one case with a hyphen between the “t” and the “mobile”). Numerous panel decisions under the Policy have held that the incorporation of a complainant’s trade mark in full in a disputed domain name, may be sufficient to establish confusing similarity under paragraph 4(a)(i) of the Policy (see for example, Nokia Group v. Mr. Giannattasio Mario,WIPO Case No. D2002-0782, The Ritz Hotel Ltd v. Damir Kruzicevic,WIPO Case No. D2005-1137, and Roust Trading Limited v. AMG LLC,WIPO Case No. D2007-1857). Neither the hyphens nor the addition of suffixes such as “de”, “com”, or “net” do anything to alleviate the confusion caused by the incorporation of the Complainant’s T-MOBILE mark in those five Domain Names.
Similarly, the Domain Names which incorporate the Complainant’s T-ONLINE mark, or almost do so, differ from that mark only in the most insignificant details (e.g. leaving out the hyphen, and adding, with or without hyphens, expressions such as “com”, “net”, and “de”, whether or not preceded by a hyphen or a dot). The Panel accepts the Complainant’s submission based on Deutsche Telekom AG v. WWW Enterprise, Inc (supra), that such additions do not have any distinguishing capacity.
For the foregoing reasons, the Panel concludes that all of the Domain Names are confusingly similar to trade marks in which the Complainant has rights.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] 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; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
If the circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interests in the Domain Names on the part of the Respondent, the evidentiary burden shifts to the Respondent to show, by plausible, concrete evidence, that he does have a right or a legitimate interest in the Domain Name.
That approach is summarized at paragraph 2.1 of the Center’s online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, as follows:
“A Complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”
In this case, there is no suggestion that the Respondent (or any business operated by him) has been commonly known by any of the Domain Names. Paragraph 4(c)(ii) of the Policy therefore has no application. The Complainant has not authorized the Respondent to use its marks (or any confusingly similar expressions), whether in the Domain Names or otherwise, and there is nothing in the record to suggest that the Respondent might have been making a legitimate non-commercial or fair use of the Domain Names, without intent for commercial gain (and so have some right or legitimate interest under paragraph 4(c)(iii) of the Policy). The resolution of the Domain Names to a website which features sponsored links to third parties’ websites (some of which offer products of the Complainant’s competitors), suggests that the Respondent has been using the Domain Names for commercial purposes.
Nor does there appear to be any possible basis for a right or legitimate interest under paragraph 4(c)(i) of the Policy (use of a domain name in connection with a bona fide offering of goods or services, or evidence of “demonstrable preparations” to make such a use of the domain name). The Domain Names all resolve to websites consisting almost entirely of sponsored links to third party websites offering goods or services which are either unrelated to mobile telecommunications or ISP Services altogether (in which case why are domain names incorporating the capital letter “T”, and the word “mobile” (or “online”), used at all?), or which offer goods or services of the Complainant’s competitors. The latter situation could never be a use of a domain name in connection with a bona fide offering of goods or services – see, for example, Shahnaz Husain v. Saxena Dinesh O,WIPO Case No. D2006-1132, where the panel said:
“In addition, in line with consistent WIPO UDRP decisions, the Respondent’s use of the Domain Name to divert Internet users to his website and redirect them to other websites, some of which offer for sale the complainant’s direct competitor’s products, presumably receiving compensation for this misdirection, cannot be considered a bona fide use of a domain name as per paragraph 4(c)(iii) of the Policy (See e.g. Lyonnaise de Banque v. Richard J;WIPO Case No. D2006-0142, and Motorola Inc v. Mr. Josip Broz; WIPO Case No. D2002-1063)”
The Lyonnaise de Banque v Richard J. and Motorola Inc. v Mr. Josip Broz cases, were applied by the 3-member panel in Provident Financial plc and Provident Insurance Plc v. Mode L,WIPO Case No. D2007-0149, and the Shahnaz Husain decision itself has been followed by this Panel in Sanofi-Aventis v Abadabq S.A.,WIPO Case No. D2006-1611, and in Sanofi-Aventis v. Keyboard Marketing, Inc.,WIPO Case No. D2007-0075.
Overall, the Panel’s clear impression is that the Domain Names have been used for no other purpose than to attract Internet users familiar with the Complainant and its products marketed under T-MOBILE or T-ONLINE marks, to the websites to which the Domain Names resolve. That is, of course, the kind of bad faith use described at paragraph 4(b)(iv) of the Policy, and as such could never qualify as a bona fide offering of goods or services.
In the foregoing circumstances, the Complainant has established a prima facie case, and the evidentiary onus shifts to the Respondent. The Respondent has failed to file any response, and accordingly the Complainant has succeeded on this part of the Complaint.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [the respondent has] registered or 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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.
The Panel is satisfied that the Complainant has proved bad faith registration and use by the Respondent. The Panel has come to that view for the following reasons:
1. The Domain Names are all confusingly similar to one or other of the Complainant’s T-MOBILE or T-ONLINE marks, and the Complainant has not authorized the Respondent to use its marks (or any expressions confusingly similar to them), whether in a domain name or otherwise. The Respondent has no right or legitimate interest in respect of the Domain Names.
2. It is inconceivable that the Respondent did not know of the Complainant and its T-MOBILE and T-ONLINE marks, when he acquired (and thereby “registered”) the Domain Names. Both of the marks on which the Complainant relies are registered in the United States of America, where the Respondent resides, and the Complainant is a major player in the mobile telecommunications sector in that country and elsewhere in the world. The Complainant also operates websites at “” and “”, and at “”, “”, “”, “”, “”, and “”. It is highly improbable that anyone acquiring 15 domain names with only very minor variations from the Complainant’s domain names, would have been unaware of the Complainant’s domain names.
3. The use of the letter “t” at the beginning of each of the Domain Names, and the use of the abbreviation “de”, are also clear indicators of both prior knowledge of the Complainant and its marks, and bad faith intent. First, the uses of the words “mobile” and “online” in all of the Domain Names, direct the reader’s attention to the fields of mobile telecommunications and the Internet respectively. The use of the letter “t” in all of the Domain Names, then directs Internet users’ attention to the Complainant, a leading player in the mobile telecommunications and ISP markets, which has adopted the letter “T” as the distinctive part of its relevant trade marks. The use of the abbreviation “de” (the country code top level domain for the Complainant’s home country, Germany) in many of the Domain Names removes any possible doubt that the registration of the Domain Names was intended to bring the Complainant and its businesses to the minds of Internet users reading the Domain Names. The Panel also accepts the Complainant’s submission that the registration of such a high number of similar domain names at once, makes it highly improbable that any person registering or acquiring the Domain Names would not have appreciated the connections between the Domain Names and the Complainant and its businesses.
4. Having regard to the factors listed in paragraphs 2 and 3 above, and in the absence of any Response to the Complaint, the Panel concludes that the Respondent knew of the Complainant and its relevant marks at the time he acquired (registered) the Domain Names.
5. In the Panel’s view, the registration of the Domain Names in this case is closely akin to the practice of “typosquatting”. The Respondent has acquired domain names which have clearly been formed by taking the Complainant’s relevant marks, and making minor additions to them (such as by adding “com” to a Domain Name in the .net gTLD, and by adding the German ccTLD “de” before .com or .net suffixes). A number of prior Panel decisions under the Policy have noted that the practice of typosquatting is virtually per se registration and use in bad faith. As the panel noted in Go Daddy Software Inc v. Daniel Hadani,WIPO Case No. D2002-0568:
“It is difficult to conceive of circumstances that would overcome the inference that the typosquatter ‘intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] website by creating a likelihood of confusion with the complainant’s mark as to the source’ of the website …”
See also the recent panel decisions in Simon & Schuster Inc v Domain Administrator Limited,WIPO Case No. D2008-0278, and The Southern Company v Texas International Property Associates,WIPO Case No. D2007-0773 (in the latter case, the panel said: “typosquatting, however, is the intentional misspelling of words with intent to siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith …”).
There may not be intentional misspelling of words in the Domain Names in this case, but the intention to “prey on” Internet users who may not read the Complainant’s very similar domain names clearly, and to siphon off Internet traffic by that means, is fairly obvious.
4. The Respondent’s use of the Domain Names in this case, has equally been in bad faith. The Domain Names all point to websites containing sponsored links to third party websites, and, in the absence of any response, the Panel infers that the Respondent has been deriving personal gain from those sponsored links. The Domain Names are so obviously similar to the Complainant’s relevant trade marks (and domain names), that it is clear that the Respondent has been riding on the back of the Complainant’s goodwill in its marks, in order to attract Internet users to the websites to which the Domain Names resolve (and so increase the Respondent’s revenue derived from the sponsored links at those websites). The circumstances fall squarely within paragraph 4(b)(iv) of the Policy: the Respondent has been using the Domain Names to intentionally attract, for commercial gain, Internet users to the websites to which the Domain Names resolve, by creating a likelihood of confusion with the Complainant’s T-MOBILE or T-ONLINE mark, as to the source, sponsorship, affiliation, or endorsement of the websites operated by the Respondent at the Domain Names.
The Complainant having proved the three elements required to be proved under paragraph 4(a) of the Policy, the Domain Names must be transferred to the Complainant.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names:
, , , , , , , , , , , , , , be transferred to the Complainant.
Warwick Smith
Sole Panelist
Date: April 17, 2008
Full & Egal Universal Law Academy