WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Deutsche Telekom AG v. Kaththea Sias Case No. D2008-1665 1. The Parties
Complainant is Deutsche Telekom AG, of Bonn, Germany, represented by Lovells LLP, of Munich, Germany.
Respondent is Kaththea Sias, of Emeryville, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Melbourne IT Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2008. On November 3, 2008, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the disputed domain name. On November 6, 2008, Melbourne IT Ltd transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on November 17, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 7, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 10, 2008.
The Center appointed Eduardo Machado as the sole panelist in this matter on December 19, 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. 4. Factual Background
Complainant is one of Europe's largest telecommunications company and one of the worldwide engines of innovation in the industry. The Complainant has established presence in the major economic centres of the world, serving customers in more than 65 countries around the globe through regional units with a focus on the most dynamic markets in Europe and the United States of America.
Complainant has registered a large number of national, Community and international trademarks reflecting the term “T-Mobile”, including, inter alia, the US Trademarks No. 3219515 and US 3196091, the International Registrations No. 680034 and No. 864393 and the European Community Trademark No. 485441.
Complainant and its subsidiary T-Mobile USA have registered and use among others the domain names , , , and . 5. Parties' Contentions A. Complainant
Complainant asserts that the disputed domain name is confusingly similar to the Complainant's trademarks T-MOBILE, as the domain name consists of the Complainant's famous T-MOBILE mark on the one hand and the term “group” on the other. Complainant contends that the fact that the disputed domain name incorporates Complainant's trademark in whole has already been held to be sufficient to establish that the domain name is confusingly similar to Complainant's registered trade marks and that this was expressly decided by previous panels with respect to Complainant's trademark T-MOBILE. Complainant also asserts that the addition of the generic term “group” does not prevent the disputed domain name from being confusingly similar to the Complainant's trademarks. Furthermore, Complainant asserts that the Complainant's T-Mobile business group is often referred to as the “T-Mobile Group” and, therefore, the combination of the T-MOBILE mark with the generic term “group” would rather increase than exclude the likelihood of confusion between Complainant's trademarks and the disputed domain name.
Complainant contends that the disputed domain name redirects Internet users to a website which displayed a notice that the site was under construction and contained a link to a website relating to the internet-based software product “Microsoft Office Live Small Business”, and that, consequently, Respondent does not show any legitimate interest in the use of the disputed domain name. Complainant also asserts that Respondent does not use the disputed domain name for a bona fide offering of goods or services and there is no indication that Respondent is commonly known by the disputed domain name. Also, Complainant contends that Respondent is not making a legitimate non-commercial or fair use of the domain name. Furthermore, Complainant asserts that Respondent is not, and never has been, a representative or licensee of Complainant, nor is Respondent otherwise authorized to use Complainant's T-MOBILE marks.
Complainant contends that the disputed domain name has been registered and is being used in bad faith, because by the time of the registration of the domain name the Complainant's trademarks had already been registered for several years and because the Complainant and its T-MOBILE trademark are well known on a worldwide basis. Complainant also contends that the disputed domain name was registered using a Private Registration service that allows the Respondent not to disclose his actual contact details in the WHOIS record.
Finally, Complainant contends that, since the disputed domain name is confusingly similar to Complainant's trademark T-MOBILE, and was used for a website that advertised the internet-based software product “Microsoft Office Live Small Business”, it is evident that the Respondent tried to attract Internet users by creating a likelihood of confusion with the Complainant's famous trademark T-MOBILE. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent 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. A. Identical or Confusingly Similar
The Panel finds that the domain name is confusingly similar to Complainant's T-MOBILE trademarks. The domain name differs from Complainant's registered T-MOBILE marks only in the addition of the dictionary term “group”, which is not enough to characterize it as distinct from Complainant's trademarks. See Deutsche Telekom AG v. Philip Seldon/RegTek Whois Envoy, WIPO Case No. D2007-0674. “[...], in devising the domain names the Respondent has taken the entirety of the T-MOBILE mark and merely added to it a generic and common expression, [...]. It has been held in many UDRP proceedings that doing so does not diminish the otherwise confusing similarity between a domain name and a trademark, for Internet users will simply assume that the generic or common expression relates to the Complainant and not to anyone else.”
The Panel finds that Complainant has established the first element of the Policy. B. Rights or Legitimate Interests
A complainant is required to make out a 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 Policy. See Morgan Freeman v. Mighty LLC,WIPO Case No. D2005-0263; Croatia Airlines d.d. v. Modern Empire Internet Ltd,WIPO Case No. D2003-0455; and Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110. In this case, Complainant has made out a prima facie case that Respondent has no rights or legitimate interests.
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used or prepared to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the domain name.
With respect to paragraph 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of the domain name.
The Panel therefore finds that Complainant has met the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(b)(iv) of the Policy, a respondent has used and registered a domain name in bad faith if, inter alia, the respondent has used the domain name intentionally to attempt to attract, for commercial gain, Internet users to the respondent's website or other online location by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation or endorsement of the respondent's site or of a product or service offered on the respondent's site.
The Panel finds that Respondent registered the domain name in bad faith.
Complainant's allegations of bad faith are not contested. Complainant's trademark T-MOBILE is widely known and, therefore, the Panel finds persuasive Complainant's allegation that the Respondent must have been aware of the Complainant's rights in the mark and, further that Respondent knowingly infringed Complainant's trademark when it registered the subject domain name.
Under paragraph 4(b)(iv) of the Policy, it is evidence of bad faith that, “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.” Respondent used Complainant's known trademark to attract users to Respondent's websites where there are links to Complainant's competitors. This is evidence of the intention by Respondent to attract Internet users for commercial gain, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondents' website or of a product or service on Respondents' website.
At the time the Complaint was filed, the domain name resolved to a page that displayed advertisings. At the time this Decision was drafted, the domain name resolved to an “unavailable” page, which, according to several prior UDRP decisions, is considered a case of passive holding of the domain name. Prior decisions have ruled that in such cases, although active use of a disputed domain name is not essential to establish bad faith, the panel must examine all the circumstances of the case to determine bad faith. As the disputed domain name wholly reproduces Complainant's trademarks, in the circumstances, there is no possible good faith use of it.
Accordingly the Panel finds that Complainant has made out bad faith registration and use of the domain name by Respondent. 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 name be transferred to Complainant.
Eduardo Machado
Sole Panelist
Dated: December 19, 2008
Full & Egal Universal Law Academy