The Complainant is Deutsche Telekom AG of Bonn, Germany, represented by Bird & Bird LLP, Germany.
The Respondent is Ambton LLC of Philadelphia, Pennsylvania, United States of America ("United States"). 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 24, 2015. On September 25, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 25, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 8, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 28, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 30, 2015.
The Center appointed Ian Lowe as the sole panelist in this matter on November 13, 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 one of Europe's largest telecommunications companies. It provides fixed network/broadband, mobile communications, Internet and IPTV products and services for consumers as well as information and communication technology solutions for business customers. As of December 2014, the Complainant had some 151 million mobile customers, 30 million fixed network lines and more than 17 million broadband lines. "T-Mobile" is the business name in the United States under which the Complainant's business in the mobile communications sector is conducted.
The Complainant is the registered proprietor of a large number of national, Community and international trademarks comprising the T-MOBILE mark, including United States trademark number 2911878 T-MOBILE registered on October 5, 1999, and International Registration number 680034 T-MOBILE registered on February 26, 1997 designating a number of territories.
The Complainant has registered and uses, amongst others, the domain names , and .
The Domain Name was registered on May 14, 2015. The Complaint notes that it resolves to a website at the Domain Name offering for sale T-Mobile branded refill SIM cards at reduced prices. 5. Parties' Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to its T-MOBILE trademarks, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the 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 has no hesitation in accepting that the Complainant has long-standing, uncontested rights in respect of the T-MOBILE mark both through very widespread use and by virtue of its registered trademarks in the United States and in many other countries. Ignoring the ".com" suffix for the purpose of assessing the similarity of the Domain Name and the mark in which the Complainant has rights, the Domain Name comprises the entirety of the Complainant's mark, without the hyphen, together with the generic word "coupons". In the Panel's view, the omission of the hyphen is of no significance and the addition of the generic term "coupons" does not detract from the distinctiveness of the "T-Mobile" element.
Accordingly, the Panel is satisfied that the Domain Name is confusingly similar to a mark in which the Complainant has rights. B. Rights or Legitimate Interests
The entirety of the submissions made by the Complainant as to the Respondent having no rights or legitimate interests in respect of the Domain Name is as follows:
The Respondent offers and promotes the sale of T-Mobile branded refill SIM Cards at reduced prices on the website available under the disputed domain name. Since the Respondent is not an authorised dealer or licensee of the Complainant, it is obvious that the Respondent is trying to confuse internet users into thinking that the website under the disputed domain name is an official website of the Complainant and is thus trying to profit from the high reputation and the goodwill of the Complainant's famous trademark "T-Mobile".
Consequently the Respondent does not have any legitimate interest in the use of the disputed domain name.
The Panel has struggled to see how this submission makes good the allegation that the Respondent has no rights or legitimate interests in respect of the Domain Name. The cease and desist letter sent to the Respondent by the Complainant's representative does not make any allegations against the Respondent beyond what is set out above.
Paragraph 4(c)(i) of the Policy indicates that one of the circumstances that may demonstrate a respondent's rights or legitimate interests to a domain name is that, before any notice to the respondent of the dispute, it has used the domain name in connection with a bone fide offering of goods or services. Here there is no suggestion in the Complaint that the Respondent is offering counterfeit SIM cards for sale or SIM cards that have somehow been attributed with credit fraudulently (or even that the sale of the SIM cards will cause loss to the Complainant in some other way). There is no submission that these are not "genuine" T-Mobile SIM cards or that the Complainant's trademark has been affixed to the SIM cards without the Complainant's consent.
The Complaint alleges that the Respondent is not an authorised dealer or licensee of the Complainant and in the absence of a Response from the Respondent, the Panel naturally accepts that this is the case. However, the Complaint does not suggest that for this reason the offering of discounted SIM cards by the Respondent is not bona fide.
The Complainant goes on to state that "it is obvious that the Respondent is trying to confuse internet users into thinking that [its] website…is an official website of the Complainant". On the basis of the material put forward by the Complainant, the Panel is not convinced that this is the case. The Respondent is clearly trying to attract Internet users who are interested in T-Mobile services to its website in order to sell them discounted T-Mobile SIM cards, but the Panel considers that Internet users may well understand that the use of the "tmobilecoupons" domain name indicates that a discounted T-Mobile product will be available at the website that would not typically be available from the Complainant or from an authorised dealer. Accordingly, if anything, the Panel is more prepared to accept that the nature of the Domain Name is such that an Internet user would believe that the Respondent's website was not an official or authorised website, a belief that would be reinforced when the user landed on the Respondent's website and saw the substantial discounts being offered.
On the basis of the material put forward by the Complainant, therefore, the Respondent appears to be selling from the website at the Domain Name the genuine, trademarked goods of the Complainant; in a case where it is plausible that Internet users would readily appreciate that the Respondent was not an authorised reseller of the Complainant; and the Domain Name is not identical to the Complainant's trademark.
As many panels have found, in view of the difficulty in a complainant proving a negative case that the respondent has no rights or legitimate interests in respect of the disputed domain name, it may well be sufficient for a complainant to make out a prima facie case that the respondent could have no such rights or legitimate interests, then leaving it to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name.
In this case, however, it appears to the Panel that the opposite position arises. On the face of the use being made by the Respondent of the Domain Name, a prima facie case arises that the Respondent may have rights or legitimate interests in respect of the Domain Name by reason of a bona fide offering of goods or services. Accordingly, it was incumbent on the Complainant to deal with this prima facie case, if appropriate by addressing the requirements set forth in the panelist's decision in Oki Data with which many panels have agreed (See Oki Data Americas, Inc. v ASD, Inc.,WIPO Case No. D2001-0903).
As set out above, it has entirely failed to do so. There is nothing in the Complaint or the evidence submitted by the Complainant to dispel that prima facie case. Furthermore, there is no suggestion that the Respondent has given false contact details or sought to hide its identity behind a privacy service.
However, on visiting the website at the Domain Name, the Panel can see that there are tabs towards the top of the home page referring to competitors of the Complainant. The tabs in question provide links to other websites, by inference also operated by the Respondent, where discounted SIM cards of other mobile telephony providers are for sale.
In these circumstances, although not directed to the Respondent's website by the Complaint, and although the Complainant does not invite the Panel to do so, the Panel has considered the criteria suggested in Oki Data and subsequent cases. These indicate that where the Respondent is using a domain name comprising the Complainant's trademark for a website selling what are on the face of it the genuine, legitimate goods of the Complainant, then this may give rise to rights or legitimate interests on the part of the Respondent, even one who is an unauthorised reseller of the Complainant's goods. This may be the case where:
a) the domain name does not comprise the unadorned trademark of the Complainant; and
b) the Respondent has not set out to corner the market in domain names comprising the Complainant's mark; and
c) the Respondent is only selling the Complainant's goods from the website and not other goods or services, particularly goods or services of the Complainant's competitors.
In this case, as set out above, the Panel has determined that the Respondent's website includes prominent tabs with links to other websites where SIM cards of other telecoms operators are available for purchase. This therefore appears on the face of it to be a classic case of "bait and switch" where the Internet user may be drawn to the Respondent's website by the use of the Complainant's trademark in the Domain Name, but then be tempted into switching to a competitor's product.
Accordingly, the Panel considers that the Respondent's use of its website does not simply comprise making a bona fide offering of goods or services and that a prima facie case is made out that the Respondent does not have rights or legitimate interests in respect of the Domain Name. The Respondent has chosen not to respond to the Complaint to put forward an explanation to counter this prima facie case, that arises from the home page of its website. Despite, therefore, the disarmingly poor quality of the Complaint, the Panel does find that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
In light of the use the Respondent has made of the Domain Name, there can be little doubt that the Respondent chose a domain name comprising the Complainant's T-MOBILE trademark with the Complainant and its rights in that mark in mind and with a view to such use as described above. Accordingly, the Panel finds, on the same basis, that the Respondent has registered and used the Domain Name 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.
Ian Lowe
Sole Panelist
Date: November 27, 2015
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