The Complainant is Deutsche Telekom AG of Bonn, Germany, represented by Hogan Lovells International LLP, Germany.
The Respondent is Deborah Hampton of Chicago, Illinois, United States of America (the "USA"). 2. The Domain Name and Registrar
The disputed domain name is registered with Active Registrar, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 27, 2015. On January 27, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 31, 2015, 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.
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 February 11, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 3, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 4, 2015.
The Center appointed Antony Gold as the sole panelist in this matter on March 11, 2015. 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
The Complainant is Europe's largest telecommunications company. It serves customers in over 65 countries. Its mobile communications division is one of the top 3 mobile telephone providers in the world and it has a substantial customer base.
The Complainant's mobile communications business trades in the USA under the name "T-Mobile". The Complainant has extensive trade mark protection for T-MOBILE including US trademarks Nos. 2911878 and 2282432, International Registrations Nos. 680034 and 864393 and European Community Trademark No. 485441. The first of these trade marks, US No. 2911878, was applied for in 1996 and registered in 2004.
The disputed domain name was registered on April 21, 2014. As at August 2014 it pointed to a website which solicited personal information from job applicants who, due to the content of the website, were likely to have been under the mistaken impression that the website was operated by the Complainant for the purpose of processing job vacancies for the Complainant's business in the USA. The disputed domain name does not presently point to a live website. 5. Parties' Contentions A. Complainant
The Complainant asserts that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which it has rights. The Complainant draws attention to its extensive portfolio of T-MOBILE trade marks including, the trade mark registrations referred to above. These and its other T-MOBILE trade marks are registered in a wide variety of classes of goods and services, including Classes 9, 14, 16, 18, 25, 28, 36, 37, 38, 41 and 42. The Complainant has also registered and used a number of domain names which include "t-mobile" including , and .
The Complainant says that the disputed domain name is confusingly similar to its T-MOBILE trade marks. It points out that the entirety of its trade mark is replicated in the disputed domain name. It addresses both the additional elements which are included within the disputed domain name. The Complainant characterizes the "s" after "t-mobile" as a "linking element". In respect of the second element, namely the word "career" the Complainant says that its well-known mark comprises the distinctive and dominant component of the disputed domain name and that the public will perceive the word "career" as simply a descriptive or generic component which will not serve to reduce the likelihood of confusion. In this respect, the Complainant draws attention to a number of other decisions in proceedings under the UDRP in which panels have considered domain names which comprise well-known and distinctive trade marks used in conjunction with a descriptive or generic term. These cases include Deutsche Telekom AG v. Philip Seldon/RegTek Whois Envoy,WIPO Case No. D2007-0674) in which the panel said: "[…] 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".
In support of its assertion that the Respondent has no rights or legitimate interests in respect of the disputed domain name, the Complainant points to the previous unauthorized use of the website by the Respondent. It says that none of the circumstances listed under paragraph 4(c) of the Policy which might indicate a legitimate interest in the disputed domain name have been made out. Specifically, the Respondent does not use the disputed domain name for a bona fide offering of goods and services, there is no indication that the Respondent was commonly known by the disputed domain name, the Respondent is not making a legitimate noncommercial or fair use of the dispute domain name, it is not, nor has it been, a representative or licensee of the Complainant nor is it otherwise authorized to use the Complainant's T-MOBILE trade marks.
The Complainant asserts that, as the Respondent has made a prima facie case showing that the Respondent does not have any rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it does.
Lastly, the Complainant asserts that the disputed domain name has been registered and used in bad faith. Dealing first with bad faith registration, the Complainant points out that, as at the date of registration of the disputed domain name on April 21, 2014, the Complainant's trademarks had been registered for several years and its business conducted under its T-MOBILE trade mark was very well known, particularly in the USA. The Complainant says that, when registering the disputed domain name, the Respondent would certainly have known about the Complainant's T-MOBILE trade marks and business name and that the disputed domain name can only have been registered in order that the Respondent could benefit from the reputation and fame of the Complainant's trade marks. Accordingly it says that the registration was in bad faith. Moreover, the Complainant says that the Respondent's use of a private registration service to effect the registration is a further indication of bad faith. In this respect, the Complainant draws attention to Saul Zaentz Company d/b/a Tolkein Enterprises v. Eurobox Ltd. I "The Saul Zaentz Company",WIPO Case No. D2008-0156, in which the panel said: "Indeed, the use of a proxy service would more usually (although not necessarily always) be indicative that the Respondent is seeking to hide its activity from scrutiny in proceedings under the Policy. The natural inference from this is a negative one – that the Respondent has 'something to hide. '".
The Complainant says that whilst there is presently no active use of the disputed domain name, it has previously been used to host a "forged "T-Mobile" website" in order to obtain sensitive personal data from customers who will have visited the website under the impression that it was owned and operated by the Complainant. The Complainant produces samples of emails and forms sent to applicants who, having visited the website, emailed the Respondent, evidently believing themselves to be dealing with the Complainant. The Complainant says that it is accordingly obvious that the Respondent registered the disputed domain name with a view to creating a likelihood of confusion with the Complainant's T-MOBILE trade mark and to obtain financial gain and it says that, by doing so, the Respondent was taking unfair advantage of its T-MOBILE trade marks. The Complainant says, finally, that despite writing to the Respondent she has neither cancelled her registration of the disputed domain name nor made any attempt to transfer it to the Complainant nor has she provided any evidence of actual or contemplated good faith use of the disputed domain name. Accordingly, the Complainant says that the use of the disputed domain name by the Respondent is in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, these Rules, the panel shall draw such inferences therefrom as it considers appropriate.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(ii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant clearly has rights in the trade mark T-MOBILE. The bar is not set particularly high in this respect and the Complainant's multiple trade mark registrations for T-MOBILE are easily sufficient to satisfy this requirement.
The disputed domain name is not identical to T-MOBILE and the Panel accordingly has to consider whether it is confusingly similar. The addition of an "s" after "t-mobile" may serve to pluralize the Complainant's T-MOBILE trade mark but it does not serve to render the domain name dissimilar to the trade mark as it is too insignificant to have any real effect in the perception of the mark. The addition of "career" adds a generic word to "t-mobiles". As the Complainant has contended, the inclusion of "career" as part of the disputed domain name would suggest to most members of the public that details of career opportunities at the Complainant can be found at any website to which the disputed domain name points. In this respect, the Panel shares the analysis and finding of the Panel in Deutsche Telekom AG v. Siraj Nayee, WIPO Case No. D2012-1148, to which the Complainant has referred; adding a generic word to a domain name which includes a distinctive trade mark in its entirety would not generally serve to render the domain name dissimilar to the trade mark and it does not do so in this case.
The Panel according finds that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides non-exhaustive examples of how a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are if a respondent has used or prepared to use the domain name in connection with a bona fide offering of goods and services, if a respondent has been commonly known by the domain name or if a respondent has made 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 in issue.
Dealing with each of the above examples in turn, the only known use of the disputed domain name has been in respect of a website, the evident purpose of which was to obtain personal information from visitors to the site. This objective was achieved by creating the untrue impression that the website was operated by the Complainant for the purpose of progressing job applications for employment in its business in the USA. This is not a bona fide offering of goods and services. As the panel explained in Drexel University v. David Brouda,WIPO Case No. D2001-0067, if a respondent has chosen a domain name in order to create an unauthorized impression of association with a complainant that does not give the respondent a right or legitimate interest in the domain name. Second, there is no evidence to suggest that the Respondent has ever been known as "T-mobile" or by any similar name. Third, the use to which the disputed domain name has been put, as outlined above, does not amount to 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 in issue. Moreover, the Complainant has stated that it has never had any dealings with the Respondent and that it has not given the Respondent any form of express or implied authority to use its trade mark.
The Panel has considered the fact that the disputed domain name does not at present point to an active website. The last use of the website to which the Complainant has drawn attention is dated around August 2014 and the website appears to have been taken down in response to the first letter sent to the Respondent by the Complainant's lawyers. However, the Respondent has chosen to retain the disputed domain name, she has not given any explanation or justification for her wrongdoing and there is every reason to suppose that, if the disputed domain name remains in her possession, a website similar or identical to that which was previously operated by the Respondent will be re-established. Accordingly, the Panel attributes little significance to the fact that the website is not presently in operation. If at all the fact that the disputed domain name is now passively held, likely in response to the Complainant's Cease and Desist letter, indicates that the Respondent lacks a legitimate interest in the disputed domain name.
Against this background, it is for the Respondent to attempt to justify its registration. The Respondent has chosen not to provide any explanation as to why it might have a legitimate interest or right in the disputed domain name. Having regard to all of the above, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
As at the date of registration of the disputed domain name in April 2014, the Complainant's business was well established. Whilst the Complainant has not provided evidence which directly supports its contention that "the name T-Mobile is universally recognized and relied upon as identifying the Complainant", it is very well known. The Panel accepts that, in the absence of any credible explanation to the contrary by the Respondent, she must have had the Complainant's business and its T-MOBILE trade mark in mind when she registered the disputed domain name. With very well-known trade marks, the registration of a domain name, without the consent of the owner, which incorporates the trade mark in its entirety, is strongly suggestive of a bad faith registration. As the panel found in PepsiCo, Inc. v. Paul J. Swider,WIPO Case No. D2002-0561:"Respondent's registration, without authorization, of a domain name that is identical to Complainant's famous mark and trade name is in and of itself evidence of bad faith". It is not possible to conceive of any justifiable basis for registration of the disputed domain name by the Respondent. The Panel accordingly finds that the registration of the disputed domain name was in bad faith. It is not necessary to deal with the Complainant's submissions concerning the inferences to be drawn from the Respondent's use of a privacy service in order to effect the registration of the disputed domain name.
The Panel accordingly has regard to the form and content of the website, to which the disputed domain name pointed as at August 2014 as outlined earlier in this Decision. Use of the disputed domain name for the purpose of pointing to such a website falls within one of the non-exhaustive examples of bad faith use set out at paragraph 4(b) of the Policy namely by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location.
It is material to consider what, if any, significance should be attached to the fact that, as at the date of preparation and filing of the Complaint, the disputed domain name did not point to a live website. However, for the reasons outlined earlier, the Panel does attribute any significance to this. The Respondent may have taken the offending website down quickly in response to a letter from the Complainant's lawyers but there is nothing to suggest that the website might not be re-established just as quickly and the Respondent has given no indication to suggest otherwise. Once the Complainant has been able to demonstrate that the disputed domain name has been used in bad faith, the Respondent cannot defeat an assertion of bad faith use simply by taking down a website which is capable of being re-established at any time. In any event, passive holding of a domain name does not prevent a finding of bad faith use.
The Panel accordingly finds that the disputed domain name has been registered and used in bad faith. 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 disputed domain name be transferred to the Complainant.
Antony Gold
Sole Panelist
Date: March 25, 2015
Full & Egal Universal Law Academy