The Complainant is Deutsche Telekom AG, Bonn, Germany, represented by Hogan Lovells International LLP, Germany.
The Respondent is Domain Manager, Bould Des Sources, Quebec Canada. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 14, 2011. On September 15, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On September 15, 2011, GoD, Inc. transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on September 22, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 12, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 17, 2011.
The Center appointed David Perkins as the sole panelist in this matter on November 3, 2011. 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 4.A Complainant
4.A.1 The Complainant is one of the world’s largest telecommunications and information technology service companies. It has an established presence in the major economic centres of the world and through regional units serves customers in more than 65 countries. The Complainant’s trademarks
4.A.2 The Complaint exhibits a print from “BrandZ Top 100 2011” trademarks published by Milward Brown, which ranks the Complainant’s DEUTSCHE TELEKOM mark as Germany’s most valuable trademark and as the nineteeth most valuable trademark worldwide. The Complainant is the proprietor of International Registration IR00661455 for DEUTSCHE TELEKOM which covers 47 countries and was filed on August 1, 1996.
4.A.3 The Complainant is also the proprietor of the following registered trademarks for TELEKOM.
Country Reg. No. Mark Class(es) Application Date Registration Date
Germany
DE02008716
TELEKOM1and device
38
September 26, 1991
January 29, 1992
Germany
2DE302008070745
TELEKOM
9: 16: 35-38 and 41-42
November 7, 2008
December 19, 2008
Germany
DE330043798
TELEKOM
9: 16: 25: 28: 35-39: 41-42
June 9, 2000
September 1, 2000
Community Trade Mark
EM00214619
TELEKOM1
9: 14: 16: 18: 25: 28: 36-38: 41-42
April 10, 1996
September 5, 2003
International Registration
2IR01012221
TELEKOM
9:16: 35-38: 41-42
October 1, 2009
October 10, 2009
International Registration
3IR00755707
TELEKOM
9: 16: 25: 28: 35-39: 41-42
May 17, 2001
June 7, 2001
4.A.4 The Complainant is also the proprietor of the registered German trademark DE302009020038 for TELEKOM DEUTSCHLAND, which was applied for on April 1, 2009. The Complainant’s TELEKOM domain names
4.A.5 The Complainant is the registrant of the following domain names Domain Name Date Created
October 11, 2005
October 11, 2005
May 22, 2006
January 31, 1999
September 1, 2004
April 5, 2006
November 10, 2008
Of these, only was created after the date when the disputed domain name was created.
4.A.6 Although (as stated) the disputed domain name was created on May 26, 2006, the Complainant states that it was not until late February 2011 that it first became aware of that domain name. This was when one of the Complainant’s employees mistyped the Complainant’s domain name by mistakenly omitting the period/dot. He was then directed by his Firefox browser to the Respondent’s website hosted under the disputed domain name . 4.B. Respondent
4.B.1 In the absence of a Response, what is known about the Respondent is derived from the Complaint. The disputed domain was created on May 26, 2006. That domain name resolves to a website which contains various sponsored links in the German language to, inter alia, the telecommunications sector. The website also contains a link to the auction platform Sedo, at which the disputed domain name is offered for sale.
Correspondence between the Parties : March to July 2011
4.B.2 When the Complainant first became aware of the disputed domain name in late February 2011 a cease and desist letter dated March 15, 2011 was sent by the Complainant’s counsel to the Respondent. That letter and subsequent email exchanges with the Respondent’s counsel in Montreal, Canada - Ms. Avi Levy - is exhibited to the Complaint. In that exchange the Respondent (through its counsel) offered to sell the disputed domain name to the Complainant for USD 6,000.00. The Complainant counter-offered USD 100.00 as compensation for the Respondent’s expenses in connection with the registration and maintenance of the name. The Respondent’s counsel then offered to transfer that name to the Complainant for USD 2,000.00 but this was rejected by the Complainant. 5. Parties’ Contentions 5.A Complainant Identical or Confusingly Similar
5.A.1 The Complainant is the proprietor of registered trademarks for DEUTSCHE TELEKOM: TELEKOM and TELEKOM DEUTSCHLAND in a number of countries. Registrations for DEUTSCHE TELEKOM and for TELEKOM were registered and/or applied for before May 26, 2006, which is the date when the disputed domain name was created. Additionally, the Complainant is the registrant of seven (7) domain names, six (6) of which consist of the mark “telekom” and the seventh comprises the mark “telekom-de”. Six of those seven domain names were registered before the date when the disputed domain name was created.
5.A.2 The Complainant’s case is that the operative part of the disputed domain name “telekom” is identical with its TELEKOM registered trademark; see, paragraph 4.A.3 above. The suffix “de” is a common abbreviation for Germany [Deutschland] and has no distinguishing effect over the TELEKOM trademark.
5.A.3 The Complainant also asserts that, because (as stated) “de” is a common abbreviation for Germany, the disputed domain name is also confusingly similar to its very well-known DEUTSCHE TELEKOM trademark - see, paragraph 4.A.2 above.
5.A.4 Finally, the Complainant’s case is that the disputed domain name is also confusingly similar to its TELEKOM DEUTSCHLAND trademark: paragraph 4.A.4 above. Again, by reason of “de” in the disputed domain name being an abbreviation for Germany, the Complainant asserts that the name is just another spelling of TELEKOM DEUTSCHLAND.
5.A.5 In sum, the Complainant asserts that any domain name containing “telekom” and a reference to Deutschland such as “de” will lead Internet users into associating the disputed domain name with the Complainant’s registered trademarks. In the circumstances the Complainant’s case is that the disputed domain name is confusingly similar to its TELEKOM trademarks identified in paragraphs 4.A.2 to 4.A.4 above. Rights or Legitimate Interests
5.A.6 The Complainant says that it has not licensed or otherwise authorised the Respondent to use its TELEKOM trademarks. Nor, the Complainant says, can the Respondent bring itself within paragraph 4(c)(ii) of the Policy.
5.A.7 Because the disputed domain name is confusingly similar to the Complainant’s TELEKOM trademarks, the Complainant asserts that the Respondent’s use of that domain name can neither be a bona fide, nor a legitimate non-commercial of fair use. It is clearly commercial, since the Respondent will derive revenue from Internet users visiting the website to which the disputed domain name resolves. Registered and Used in Bad Faith
5.A.8 In this connection, as evidence of bad faith the Complainant refers to the Respondent’s price tag of US$6,000.00 to transfer the disputed domain name, which clearly is significantly in excess of its out of pocket costs directly related to that name: see, paragraph 4.B.2 above.
5.A.9 Further, given the very well known status of the Complainant’s TELEKOM trademarks, the Complainant’s case is that the Respondent must have known of those marks when creating the disputed domain name in May 2006.
5.A.10 Additionally, the Complainant characterises the disputed domain name as “a typical typo squatting domain name”. In that respect, the Complainant points to the way in which it first became aware of the existence of the disputed domain name in February 201: see, paragraph 4.A.6 above.
5.A.11 Still further, numerous decisions under the Policy - a number of which are cited in the Complaint - have held that use of a domain name which is confusingly similar to a Complainant’s trademark for a website offering commercial sponsored links to entities providing goods and/or services competing with those of the trademark owner constitutes bad faith use.
5.A.12 The Complainant also identifies other indicia of the Respondent’s bad faith. For example, the offer for sale of the disputed domain name through Sedo displayed on the Respondent’s website [paragraph 4.B.1 above] and the Respondent’s continued use of that domain name after receipt of the March 15, 2011 cease and desist letter by which the Respondent was put on notice of the Complainant’s TELEKOM trademarks [paragraph 4.B.2 above]. 5.B Respondent
As stated, no response has been filed. That is despite the Respondent’s counsel stating in the correspondence summarised in paragraph 4.B.2 above that the Respondent “intends to vigorously contest any action brought against him”. 6. Discussion and Findings
6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding
(i) that the Respondent's domain name is 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 name; and
(iii) that the domain name has been registered and is being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interest in the domain name in issue.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy. Identical or Confusingly Similar
6.5 From paragraphs 4.A.2 to 4.A.4 above it is clear that the Complainant has rights in the registered trademarks DEUTSCHE TELEKOM, TELEKOM and TELEKOM DEUTSCHLAND. The Complainant is also the registrant of domain names consisting of the TELEKOM mark.
6.6 For the reasons set out in the Complaint, the disputed domain name is to all intents and purposes identical to and is plainly confusingly similar to those trademarks: see, paragraphs 5.A.2 to 5.A.5 above.
6.7 Accordingly, the Complaint satisfies the requirements of paragraph 4(a)(i) of the Policy. Rights or Legitimate Interests
6.8 In the absence of a Response, there is nothing to indicate that the Respondent could demonstrate that any of the circumstances set out in paragraph 4(c) of the Policy apply in this case.
6.9 Indeed, use of the disputed domain name to generate click-through revenue from the website to which that name resolves is, clearly, a commercial use. Further, by reason of the disputed domain name being confusingly similar to the Complainant’s TELEKOM trademarks, that use is equally clearly intended to misleadingly divert consumers to that website. Consequently, such use is neither a bona fide nor a fair use of the disputed domain name.
6.10 In the circumstances, the Complaint meets the requirements of paragraph 4(a)(ii) of the Policy. Registered and Used in Bad Faith
6.11 The Complainant’s case summarised in paragraphs 5.A.7 to 5.A.11 convincingly demonstrates evidence of bad faith as set out in paragraph 4(b)(iv) of the Policy. The other indicia of bad faith [paragraph 5.A.12] are also strongly redolent of bad faith. For these reasons, the Complaint also meets the bad faith requirement of paragraph 4(a)(iii) of the Policy. 7. Decision
For 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 the Complainant.
David Perkins
Sole Panelist
Dated: November 8, 2011
1 TELEKOM is written in stylised form T-E-L-E-K-O-M
2 Both registrations were applied for after the date when the disputed domain name was created, namely May 26, 2006
3 IR00755707 for TELEKOM filed on May 17, 2001 covers 41 countries.
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