WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Deutsche Telekom AG v. AD01
Case No. D2002-0557
1. The Parties
The Complainant is Deutsche Telekom AG, a company incorporated under the laws of Germany, having its principal place of business in Bonn, Germany.
The Respondent is AD01, the legal status of which is not clear. The address of the Respondent as contained in the domain name registration is 5a alum house, Central, Alum chine rd, Bournemouth, bh4 8dt, United Kingdom.
2. The Domain Names and Registrar
The domain names at issue are <t-mobilebusiness.com>,
<t-mobileringtones.com>, <t-mobiletones.com> and <t-mobilelogos.com>.
The domain names are registered with Tucows Inc., ("the Registrar"), Mowat Avenue, Toronto, ON, Canada.
3. Procedural History
A Complaint was submitted by e-mail to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on June 18, 2002, and in hardcopy on June 26, 2002. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated June 19, 2002.
On June 19, 2002, a Request for Registrar Verification was transmitted to the Registrar.
On June 19, 2002, the Registrar confirmed that it was in receipt of the Complaint sent to the Registrar by the Complainant, the domain names at issue, were registered with the Registrar and that the Respondent was the current registrant of the names. The Registrar also forwarded the requested WHOIS details, confirmed that the Uniform Domain Name Dispute Resolution Policy was in effect.
The Registrar has currently incorporated in its agreements the Uniform Domain Name Dispute Resolution Policy (the "Policy"). The Policy was adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999. There is no evidence that the Respondent ever requested that the domain names at issue be deleted from the domain name database. Accordingly, the Respondent is bound by the provisions of Policy.
The Panel has determined that the Complaint is in formal compliance with the requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999, (the "Uniform Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999, (the "WIPO Supplemental Rules"). The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.
No formal deficiencies having been recorded, on June 27, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, the Registrar and ICANN), setting a deadline of July 17, 2002, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by post/courier and e-mail to the addresses indicated in the Complaint.
On July 18, 2002, having received no Response from the Respondent the WIPO Center transmitted to the parties a Notification of Respondent Default. On August 6, 2002, the WIPO Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date. This Notification informed the parties that the Administrative Panel would be comprised of a single Panelist, Mr. Jonas Gulliksson.
The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and WIPO Supplemental Rules. The Administrative Panel shall issue its Decision based on the Complaint, the Policy, the Uniform Rules, the WIPO Supplemental Rules, and without the benefit of any Response from the Respondent.
4. Factual Background
The Complainant and its Registered Trademarks
"T-Mobile" is the corporate name under which the Complainant’s business in the mobile communications sector is conducted.
Complainant is the sole legal holder of numerous German and International trademarks which reflects the term "T-Mobile", including registrations in the United Kingdom.
Further, the Complainant has registered among others the domain names <t-mobile.co.uk>, <t-mobile.com>, <t-mobile.de> and <tmobile.de>.
5. Parties’ Contentions
The Complainant is Europe's largest telecommunications Company. Pending closing of the acquisition of VoiceStream and Powertel, the Complainant's subsidiary, T-Mobile International, will be the largest GSM mobile communications provider in the world. The Complainant has established presence in the major economic centers of the world, serving customers in more than 65 countries around the globe through regional units. With more than two million shareholders, the Complainant has more shareholders in Germany than any other German company and more shareholders outside its home country than any other company in the world.
(1) Confusing similarity
The domain names <t-mobilebusiness.com>, <t-mobileringtones.com>, <t-mobiletones.com> and <t- mobilelogos.com> are confusingly similar to the Complainant's trade marks "T-MOBILE".
(2) No rights or legitimate interests
The Respondent is not, and never has been, representative or licensee of the Complainant, nor is the Respondent otherwise authorized to use the Complainant 's marks.
The Respondent does not use the domain names <t-mobilebusiness.com>, <t-mobileringtones.com>, <t-mobiletones.com> and <t-mobilelogos.com> for a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use of it. Having inserted the respective domain name "www.t-mobilebusiness.com" as URL-address, the web browser originally displayed a connection to the web-page of "www. redirect.123.reg.co.uk" offering various internet topics and domains for sale. The websites "www.t-mobileringtones", "www. t-mobiletones.com" and "www.t-mobilelogos.com" are still connected to "www.redirect.123-reg.co.uk".
(3) Bad faith
In April 2002 the Complainant learned that on September 13, 2001, Mr. Darren Turgel had registered the internet domain <t-mobilebusiness.com> as admin-c for the registrant "ADOl" and thereby interfered with the Complainants trademarks and service marks described above.
(i) Before this administrative proceeding under the ICANN policy was filed, the Complainant sent the Respondent a "cease and desist" letter. The Respondent answered with Email dated May 3, 2002, and tried to sel1 the domain name to the Complainant for 40,000 British Pounds.
In the Email the Respondent pretends that he first realized the use of "T-Mobile" in the UK in April 2002. This seems to be very unlikely since on September 1 and 3, 2001, -and this means shortly before the Respondent registered the domain name -British media reported in their online issues about the rebranding of the British Mobilphone Company "One20ne" into "T-Mobile".
(ii) A search of newspaper articles concerning "T-Mobile" shows 120 references to "T-Mobile" in United Kingdom journals dating from October 1997 to June 2001. This shows not only the goodwill and reputation of the Complainant's trademarks "T-Mobile" in the United Kingdom. Also, it seems very unlikely that the Respondent has not known from the Complainant's business "T-Mobile" in the United Kingdom.
(iii) Further, the Complainant had to learn that the Respondent registered other domain names either connected with "T-Mobile" and /or mobile phone business, e. g.
which are a clear and obvious reference to the Complainant's mobile phone business, since there is the suggestion that under this domains special "T-Mobile" ringtones and display logos can be downloaded on the customer's mobile phone.
The Respondent has also registered the corresponding British domain names
The Respondent not only registered domain names with respect to trademarks and Company names of the Complainant's "T-Mobile". He also registered the domains names.
which can only be seen as a clear and obvious reference to the trademarks and company names of one of the Complainant's competitors, the "02" mobile phone company with the official homepages "www.o2.com" and "www.o2.co.uk" which is a subsidiary of British Telecom.
(iv) Furthermore, the Complainant had also to learn that a registrant named "ADM" has registered the domains
As can be seen from the speednames who-is database printout, the registrant "ADM" uses the same Address "Alum House, Alum Chine Road, bh4 8dt" and the email address "email@example.com" as the Respondent "ADOl" does.
(v) Furthermore, an entity named "V4 Corporate Ltd" is doing business under the Respondents address "Alum Chine Road, Boumemouth, bh4 8dt".
Under the domain name "www.v4.co.uk" the Company presents itself as "the Cutting edge of Internet and mobile communication technology".
"Mr. Darren Turgel" is listed as the contact for V4. On the webpage of the tradeshow ECTA, V4 advertises as follows "Telecoms marketing specialist V4 will be unveiling its new image at ECTA's Barcelona exhibition from 2-4 April 2001 [...]. V4's J solutions-led approach and in-depth understanding of telecoms has built an impressive range of clients in this sector, including WorldCom, BT, Syntegra and Storm Telecommunications. [...]. For further information on how V4 can enhance your company´s performance, contact Darren Turgel, Business Development Manager [...].
(vi) Before filing the complaint, the Complainant's attorney Mr. Graham Burnett-Hall asked Mr. Turgel during a number of telephone conversations expressively if he, Mr. Turgel, had registered further domain names with the portion "T-Mobile" besides <t-mobilebusiness.com> for ADO 1. Although Mr. Turge1 is the admin-c for all of the above listed domain names and stated that he actually is ADOl, the answer was "no".
The telephone number, Mr. Turgel used for his calls is identical with the number of the above mentioned entity "V4".
Although Mr. Turgel acts as a telecom-expert for V4, he told Mr. Burnett-Hall that he intended to use the domain <t-mobilebusiness.com> for a mobile repair service with respect to washing machines. This is not only very unlikely. Furthermore, it can not explain the registration of second level domains such as "t-mobilephones" and "t-mobileringtones".
An affidavit from Mr. Graham Burnett-Hall about the telephone conversations is provided as Annex [S] to the Complainant. The provided Annex also shows that Mr. Turgel ADOl are registering domain names with the only aim to receive money from mobilephone companies.
(vii) The Respondent has had knowledge of the Complainant's trademarks and businessnames when he registered the domain names. This is evidently clear since the Respondent's Admi-C Mr. Darren Turgel calls himself an expert in the telecom-business.
(viii) The WIPO Arbitration and Mediation Center has found in previous administrative panel decisions, that
"bad faith is indicated by the registration of a series of domain names which are confusingly similar to a famous brand name followed by the absence of any legitimate use of them for over two years since the first was registered. " (Case No D2001-0102, Nike, Inc. v. Crystal International)
In the current case, this condition is not satisfied completely as the Respondent registered the disputed domain names less than a year ago. Nevertheless registering domain names <t-mobilebusiness.com>, <tmobileringtones.com>, <t-mobiletones.com> and <t-mobilelogos.com> which are confusingly similar to the Complainant's famous brand name "t-mobile" and not using them strongly indicates bad faith. Moreover, because this is not the only case. The Respondent and persons connected strongly or more likely even identical with the Respondent registered other domain names as well which are also confusingly similar to a brand name famous especially in Great Britain on the field of mobilephone business and also does not use them so far:
(iv) According to the previous administrative panel decisions of the WIPO Arbitration and Mediation Center, J. Crew International v. Crew.com, WIPO Case No. D2000-0054 and SADD v. Steven Weber, WIPO Case No. D2000-0170 the Respondent engaged in a pattern of conduct involving speculation by registering above trademarks of others. He had no demonstrable plan to use the domain names for a bona fide purpose prior to registration of the domain name. The Respondent had constructive notice of the Complaint's rights as the domain names were registered after the registrations of the German British, Community and international trademarks "T-Mobile".
(x) The Respondent has registered the disputed domain names primarily for the purpose of selling the domain names to the Complainant who is the owner of the trademark, for valuable consideration in excess of his documented out-of-pocket costs directly related to the domain names. The Respondent tries to offer at least one of the disputed domain names shown in the whois record. This behavior in addition with the lack of use of domain name despite the offering for sale indicates the profit-seeking motives of the Respondent. The telephone conversations between the Complainant's representative Mr. Burnett-Hall and the Respondent’s admin-c Mr. Turgel showed clearly the intention of the Respondent to sell the disputed domain names to the Complainant for a very high price. The Respondent tried not only to sell one of the disputed domain names for not less than 50.000 British Pounds. Although the Complainant's attorneys have asked Mr. Turgel several times for copies of the receipts relating to the pretended costs for a website development, the Respondent never did so. Therefore, the Complainant has to assume that such costs never existed and the Respondent's statement serves only to avoid the reproach of cyber squatting.
(xi) By his conduct the Respondent prevented the owner of the trademark from reflecting the mark in a corresponding domain name.
Finally, Complainant has requested the Administrative Panel to issue a decision by which the contested domain names are transferred to Complainant.
Respondent has not contested the allegations of the Complaint.
6. Discussion and Findings
According to Paragraph 15 (a) of the Rules the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4 (a) of the Policy directs that the Complainant must prove each of the following:
1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
2) that the Respondent has no legitimate interests in respects of the domain name; and
3) that the domain name has been registered and is being used in bad faith.
Regarding the question of likelihood of confusion between T-Mobile and the domain names at issue the Panel is of the opinion that the addition of the words "business", "ringtones", "tones" and "logos" in this case would not avoid likelihood of confusion and confusingly similarity respectively since these words as a designation for a commercial origin is generic or at least descriptive.
Each domain name at issue incorporates the dominating term "t-mobile". Therefore, the domain names must be considered as confusingly similar to the T-Mobile mark.
The Respondent has not proven that he has any prior rights or legitimate interests in the domain name.
The prerequisites in the Policy, Paragraph 4 (a) (i) and (ii) are therefore fulfilled.
Paragraph 4 (a) (iii) of the Policy further provides registration and use in bad faith.
It is obvious from the facts in the case, i.e. the prior ownership by Complainant of trademark registrations for T-Mobile, that it is highly improbable that the Respondent has selected the name without first having noticed the Complainant’s numerous trademark registrations, its wide reputation in the words T-Mobile, the fact that the Respondent has offered to sell one of the domain names at issue to the Complainant, the non-contested statement in the Complaint and the contents of the Policy Paragraphs 4 (a) (i-iii) and 4 (b) (i) that the domain name has been registered and used in bad faith. Cf. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Consequently, all the prerequisites for cancellation or transfer of the domain names according to Paragraph 4 (i) of the Rules are fulfilled.
The Complainant has requested transfer of the domain names.
In view of the above circumstances and facts the Panel decides, that the domain names <t-mobilebusiness.com>, <t-mobileringtones.com>, <t-mobiletones.com> and <t-mobilelogos.com> registered by the Respondent are confusingly similar to the trademark and service marks in which the Complainant has rights, and that the Respondent has no rights or legitimate interests in respect of the domain names at issue, and that the Respondent’s domain names have been registered and are being used in bad faith. Accordingly, pursuant to Paragraph 4 (i) of the Policy, the Panel requires that the registration of the domain names <t-mobilebusiness.com>, <t-mobileringtones.com>, <t-mobiletones.com> and <t-mobilelogos.com> be transferred to the Complainant.
Dated: August 20, 2002