WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Deutsche Telekom AG v. Epesonic Computer System, James Epetimehin Case No. D2009-1221 1. The Parties
The Complainant is Deutsche Telekom AG of Bonn, Germany, represented by Lovells LLP, Germany.
The Respondent is Epesonic Computer System, James Epetimehin of Chatham, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Names and Registrar
The disputed domain names and are registered with Netfirms, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 14, 2009. On September 15, 2009, the Center transmitted by email to Netfirms, Inc. a request for registrar verification in connection with the disputed domain names. On September 15, 2009, Netfirms, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on September 23, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on October 2, 2009. The Center verified that the Complaint together with the amendment to 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 the Respondent of the Complaint, and the proceedings commenced on October 8, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 28, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 29, 2009.
The Center appointed Marilena Oprea as the sole panelist in this matter on October 30, 2009. 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.
The language of the proceeding is English. 4. Factual Background
The Complainant is a large German telecommunications company that operates in more than 65 countries and has more than two million shareholders.
T-Mobile is Complainant's corporate name for the mobile communication sector. T-Mobile offers digital voice, messaging and high-speed data services to more than 150 million customers worldwide, this making T-Mobile one of the largest mobile communication providers in the world.
The Complainant has registered a large number of national, European Community and International trademarks incorporating the term “t(-)mobile”, including the following trademarks valid in the United Kingdom where the Respondent has its correspondence address:
- T-MOBILE word mark International Registration No. 680034 of February 26, 1997 registered for goods and services in the following classes 09, 14, 16, 18, 25, 28, 36, 37, 38, 41, 42;
- T MOBILE stylized International Registration No. 680035 of February 26, 1997 registered for goods and services in the following classes 09, 14, 16, 18, 25, 28, 36, 37, 38, 41, 42; and
- T-MOBILE word CTM 00485441 /1997 for goods and services in the following classes 09, 14, 16, 18, 25, 28, 36, 37, 38, 41, 42.
The Complainant is also the owner of several domain names such as:
- and
-
The disputed domain names were registered on May 11, 2009.
The Respondent is an United Kingdom entity which is the current registrant of the disputed domain names. At the time of the filing of the Complaint, the disputed domain names were being used for commercial purposes, using Complainant's trademark, look and colors, including links to its official websites. However, when the Panel tried to access the websites corresponding to the disputed domain names, she received a “This Page Cannot Be Opened” error message. 5. Parties' Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are given in the present case, as follows:
(i) The domain names and are confusingly similar to the T-MOBILE trademark;
The disputed domain names incorporate the Complainant's trademark in whole. The fact that the disputed domain names do not contain the hyphen and the letters have a different capitalization is of no effect in this case. Further, the addition of the designation “nigeria” and its abbreviation “ng” have no distinguishing effect and is not sufficient to prevent the risk of confusion. The likelihood of confusion is increased by the fact that Complainant is doing business worldwide, the websites hosted under both domain names imitate the Complainant's corporate brand identity and therefore the Internet users will assume that they are visiting an official Nigerian website of the Complainant.
(ii) The Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain names;
None of the circumstances listed under paragraph 4(c) of the Policy to support a right or legitimate interest of the Respondent are given in the present case. Further, according to the correspondence between the parties prior to filing the Complaint, the Respondent said its websites were not related to T-MOBILE trademarks however it copied the Complainant's brand identity on its websites. The fact that the Respondent made an “extensive search for any trademark name” can simply not be true taking into account the world wide fame of Complainant's trademarks and the huge number of its trademark registrations. Further, the Respondent says that “simply what we are doing is spreading your network name down to Africa which has seem to be the best so far worldwide”, thus Respondent acknowledged the fame of T-MOBILE trademarks and contradicted its previous statement.
(iii) The disputed domain names were registered and are being used in bad faith.
The disputed domain names were registered in bad faith mainly because at the time of their registration the Complainant's trademarks had been registered and had been used extensively on a global basis. Article 4(b)(iv) of the Policy is applicable in the present case, as the Respondent was using the disputed domain names to offer services for which Complainant's trademarks have been registered, in order to attract Internet users by creating a likelihood of confusion with the Complainant's trademark. Moreover, Respondent's website is a counterfeit of the Complainant's original websites as it is using the T-MOBILE trademark, it has integrated original T-Mobile web content through use of frame links, and it copied the look and feel of the official T-Mobile websites as well as the Complainant's brand identity. Thus, the Respondent is implying that it is somehow related to the Complainant. The use of a privacy service is further evidence of registration and use in bad faith.
The Complainant requests that the disputed domain names be transferred. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove to the Panel that the following three circumstances are cumulatively met in order to obtain the transfer of the disputed domain names:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent does not have rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used by the Respondent in bad faith.
Consequently, the Panel shall further analyze the above-mentioned elements in light of the circumstances in the present case. Nonetheless, before entering into said analysis, the Panel deems necessary to clarify the issue regarding the appropriate identity of the Respondent. A. Identification of Respondent
An initial search of the WhoIs database by the Complainant showed the apparent registrants to be “Domain Privacy Group, Inc.” from Canada, named Respondent 1 and “Epesonic” from Nigeria, named Respondent 2 in the initial Complaint.
The Registrar subsequently informed the Center that the Respondent for both disputed domain names is in fact “Epesonic Computer System” whereas Domain Privacy Group, Inc. is a service that allows registrants to protect their identity. The Registrar also provided the physical and email address of the underlying registrant.
Accordingly, these details were forwarded to the Complainant, giving it the opportunity to amend the UDRP Complaint to reflect the underlying registrant as the Respondent. Complainant amended its initial Complaint by replacing the named Respondents with Epesonic Computer System.
Accordingly the Center forwarded the Complaint to the Respondent Epesonic Computer System, James Epetimehin, using the contact details provided by the Registrar, a hard copy of the Complaint being delivered on October 9, 2009 at its physical address.
The Panel is satisfied that the Complaint was properly notified to the Respondent, that Domain Privacy Group, Inc. is simply a privacy domain name registration service and Epesonic Computer System, James Epetimehin is the registrant of the disputed domain names and therefore the Respondent (see e.g., Bayerische Motoren Werke AG v. bmwrider llc,WIPO Case No. D2008-0610; and Xtraplus Corporation v. Flawless Computers, WIPO Case No. D2007-0070). B. Identical or Confusingly Similar
There are two requirements that a complainant must establish under this paragraph, namely: that it has rights in a trademark or service mark, and that the domain name is identical or confusingly similar to the mark.
The Complainant holds a large number of trademark registrations worldwide for the trademark T-MOBILE, the few cited in the present decision were filed starting in 1997.
The disputed domain names were registered on May 11, 2009.
Accordingly, the Complainant has trademark rights and the trademark predates registration of the disputed domain names.
Further, the Panel finds that the disputed domain names and are confusingly similar to the Complainant's trademark T-MOBILE as they incorporate it in its entirety. The deletion of the hyphen between the words “t” and “mobile” and the capitalization of the letters are dictated by technical factors and customary practice among domain name registrants and users, and therefore it is without legal significance from the standpoint of comparing the trademark T-MOBILE and the disputed domain names and .
Further, the geographical denomination “nigeria”, and its respective abbreviation “ng” included in the disputed domain names is not relevant; as prior WIPO UDRP panels have found, a domain name is confusingly similar to a trademark where a common geographical term is added to that trademark (see e.g., America Online, Inc. v. Dolphin@Heart,WIPO Case No. D2000-0713; Wal-Mart Stores, Inc. v. Lars Stork,WIPO Case No. D2000-0628; and L'Oréal SA v. LV Kefeng,WIPO Case No. D2009-1231). Thus, the view of the Panel is that these disputed domain names do indeed confuse an Internet user as to the source of the disputed domain names. The addition of the geographical denomination “nigeria”, and “ng” in the disputed domain names do not avoid a finding of confusing similarity but to the contrary, the Internet user may believe that it is an official site of the Complainant, created for or connected with said country.
For these reasons, the Panel finds that the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy and the disputed domain names are confusingly similar to the Complainant's trademark. C. Rights or Legitimate Interests
The Complainant has provided a prima facie showing that it has had no relationship with the Respondent and has not granted the Respondent any right to use the trademark. Thus, the burden of proof on this element shifts to the Respondent; either by demonstrating one of the three circumstances under paragraph 4(c) of the Policy or providing other relevant evidence.
Although properly notified, the Respondent chose not to participate in this procedure and therefore has failed to assert any such right or interest.
Further, there is no evidence in the case file to suggest that the Respondent has made a bona fide use of the disputed domain names, or has been known by a corresponding name, or is making any legitimate noncommercial or fair use of the disputed domain names. In fact, Respondent used the disputed domain names to sell goods and services identical to those for which Complainant's trademarks were registered, this to be further analyzed under the heading of bad faith below.
For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names, and the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires proof of bad faith in both the registration and use of the disputed domain names.
Bad faith in registration turns on (1) whether Respondent knew of Complainant and its trademark, and (2) whether Respondent targeted Complainant to benefit from confusion generated by the similarity between the domain names and the trademark (see Avon Products, Inc. v. Mary Ultes,WIPO Case No. D2009-0471).
Paragraph 4(b) of the Policy sets out a nonexclusive list of circumstances that evidence bad faith. Paragraph 4(b)(iv) provides that a holder's intentional use of a disputed domain name “to attract, for commercial gain, Internet users to [the Respondent's] 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 [the Respondent's] web site or location or of a product or service on [the Respondent's] web site or location” is evidence of bad faith.
Although the Respondent chose not to participate in this procedure, the Complainant provided evidence of the parties'correspondence prior to initiating the procedure. Accordingly, in its letter addressed to the Complainant and to the privacy service provider, the Respondent mentioned conducting an “extensive search for any trademark name” and the fact that its company is “selling most europe network products”, listing at the same time some competitors of the Complainant. Further, in its letter to the Complainant, the Respondent said that the disputed domain names “has nothing to do with there trademark of T-Mobile…what we are doing is spreading your network name down to Africa” and “[there] is an opportunity for you togenerates more sales in Africa”.
Thus, it is clear to the Panel that the Respondent was familiar with Complainant's field of activity and its trademark at the moment of registering the disputed domain names and the Respondent targeted the Complainant to benefit from confusion generated by the similarity between the disputed domain names and the trademark.
Furthermore, the excerpts provided by the Complainant (as when the Panel visited the corresponding pages, these were disabled) showed the fact that the Respondent was making commerce on the corresponding websites using the T-MOBILE trademark and use of frames similar to those of the Complainant's original websites. Indeed, an Internet user accessing these websites would very likely believe these were official websites of the Complainant, or its affiliates/associates.
The use of Complainant's trademark without its consent and providing identical goods and services on the websites corresponding to the disputed domain names is obviously use in bad faith, as provided by paragraph 4(b)(iv) of the Policy.
For all these reasons, the Panel finds that the disputed domain names were registered and are being used in bad faith, and that the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy. 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, and , be transferred to the Complainant.
Marilena Oprea
Sole Panelist
Dated: November 10, 2009
Full & Egal Universal Law Academy