WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Deutsche Telekom AG v. Family Names

Case No. D2002-0979

The Complainant is Deutsche Telekom Aktiengesellschaft, a German corporation with seat at Bonn, Germany, represented by Dr. Matthias Koch, Lovells Boesebeck Droste, Munich, Germany.

The Respondent is Family Names, of Bangalore, Kanataka (sic) 560046, India.

The domain name at issue is <deutschetelecom.net> (hereafter the "Domain Name").

The Domain Name was registered with Dotster, Inc. on April 7, 2001 (herafter the "Registrar").

The Complaint was received by the WIPO Arbitration and Mediation Center (hereafter the "Center") in hardcopy on October 22, 2002, and in electronic format on October 28, 2002. The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy (hereafter the "Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy (hereafter the "Rules"), adopted by the Internet Corporation for Assigned Names and Numbers on October 24, 1999.

On October 24, 2002, the Center acknowledged receipt of the Complaint to the parties.

On October 24, 2001, the Center sent a Request for Registrar Verification to the Registrar and received confirmation on October 31, 2002, that the Domain Name was effectively registered with Dotster Inc. by Family Names, that the Domain Name had been locked for the duration of the proceedings, that the language of the registration agreement was English and that the Registrant had submitted to jurisdiction at the location of the Registrar.

A Notification of Complaint accompanied with an electronic version of the Complaint was sent on November 1, 2002, to the e-mail address mentioned by the Registrar (whittawhitta@hotmail.com) and to the electronic mail contact connected to the Domain Name, <postmaster@deutschetelecom.net>. Both e-mails were returned to the Center by the Mail Delivery Subsystem indicating that the addresses had "permanent fatal errors". A courier expedition of the same documents to the physical address indicated by the Registrar was made on the same day. It was delivered to the address of the Respondent on November 5, 2002, and signed off by "John". The Notification of Complaint and Commencement of Administrative Proceeding informed the Respondent that it could reply to the Complaint by sending a Response to the Center no later than November 21, 2002.

On November 26, 2002, the Center notified the Respondent that it had failed to comply with the deadline to respond indicated in the Notification of Complaint. The hard copy of the Notification of Default was delivered by courier to the address of the Respondent on November 30, 2002, and signed off by "Mohan".

The Center informed the parties of the appointment of the undersigned Sole Panelist and communicated the file to the panelist on November 29, 2002.

The Panel is satisfied that the Center complied with the procedural requirements specified in the Policy, the Rules and the Supplemental Rules.

The Complainant is Deutsche Telekom AG, a famous and prominent telecommunications services provider. The Complainant holds the following word marks:

- a German trademark DEUTSCHE TELEKOM with priority date back to February 20, 1996 (registration number DE 39607816),
- an international trademark DEUTSCHE TELEKOM with priority back to February 20, 1996 (registration number 661455),
- a European Community trademark DEUTSCHE TELEKOM with priority date back to March 30, 1996 (registration number 214643),

all registered under a large number of Nice classes, ranging from a.o. electric equipment, telecommunications services to clothing and watches.

The Complainant also holds various domain names corresponding to the above trademarks, i.e. <deutschtelekom.de>, <deutsche-telekom.de>, <deutsche-telekom.net> and <deutschetelekom.com>.

The Registrar's WHOIS page produced by the Complainant and dated October 16, 2002, shows that the Respondent registered the <deutschetelecom.net> Domain Name on April 7, 2001.

When typing "www.deutschetelecom.net", the browser page indicates that the server cannot be found or the page is inactive.

The present procedure follows a similar procedure concerning the same domain name and initiated by the same Complainant on February 22, 2002, against a Mr. John McArdle. The Registrar's WHOIS page produced by the Complainant at the time and dated February 18, 2002, shows that the Domain Name had been registered on April 7, 2001, by a Mr. John Mc Ardle domiciled at PO Box 9154, Christchurch, South Island 8030, New Zealand. The administrative and technical contacts were the same as the Registrant. The e-mail of the identified administrative and technical contact was "jfm@indiatimes.com".

In that first procedure, the Complainant contended that :

- the registrant could not ignore the Complainant's trademarks when it registered the Domain Name;
- the registrant did not have any right or legitimate interest in the trademark;
- the registration of the Domain Name prevented the Complainant from registering;
- the registrant sought a profit from the sale of the Domain Name to the Complainant.

The arguments of the Complainant were supported by the e-mails sent by the registrant and signed "Mr. John McArdle" or "jfm" and displaying offers to sell the Domain Name for prices ranging between USD 250.- and 1,500.-. Following the execution of a transaction under which the Complainant was to pay USD 285.- to Mr. McArdle within five days from the notification of transfer of the Domain Name to the Complainant, the Complainant withdrew that first Complaint.

However, the transaction remained unperformed. On August 20, 2002, the Complainant sent an e-mail to the said Mr. McArdle enquiring about a recent transfer of the Domain Name to "Family Names of Bangalore, Indonesia (sic), apparently in breach of the above mentioned Agreement". The addressee replied on August 27, 2002, this time in the name of a Mr. John Cradle, indicating that he was still willing to sell the Domain Name but under certain conditions: "If you wish to pay me I shall see that it is transferred to your clients. But this time will not do nothing until I have the money in my hand or the transfer is done via an escrow company". He complained that he had never received his signed copy of the transaction from the Complainant and continued with accusations against the counsels for the Complainant. On this occasion, he offered to travel to Munich for final execution, provided he was reimbursed for his expense and paid USD 500.- for the "delays and unnecessary problems which you have caused".

The Complainant then offered to purchase the Domain Name for USD 500.-, by means of a facilitated on-line transaction service. As the transaction was not completed in time, the offer automatically lapsed and the Complainant filed the current Complaint.

Complainant is seeking the transfer of the Domain Name.

According to the Complaint, Deutsche Telekom AG is the largest telecommunications company in Europe and serves customers in more than 65 countries around the globe. The name "Deutsche Telekom" is universally recognized and relied upon as identifying the Complainant.

The Complainant contends that the Respondent is not and has never been a representative of Deutsche Telekom AG, a licensee or an authorized user of the trademark DEUTSCHE TELEKOM. According to the Complainant, the Respondent does not use the Domain Name for a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use of it.

The Complainant considers that the registration and use of the Domain Name is in bad faith. In this respect, the Complainant contends that:

- Neither Mr. McArdle nor the Respondent ever used the Domain Name.

- The Respondent and Mr. McArdle are the same person as evidenced by the exchange of e-mail which took place after the signature of the transaction and the transfer of the Domain Name to Family Names in India. Using the e-mail addresses previously indicated by Mr. McArdle and asking for an explanation of the transfer, the Complainant received a response from a Mr. John Cradle explaining the reason for the non-performance of the transaction and offering a new transaction.

- As a result, all offers from Mr. McArdle, jfm or Mr. Cradle to sell the Domain Name for a consideration in excess of out-of-pocket expenses (initially USD 200.-, then USD 1,500.-) can be attributed to the Respondent. The fact that Mr. McArdle did not perform the Transaction and subsequently failed to transfer the Domain Name for USD 500.- is evidence of his bad faith: "However, instead of fulfilling his obligation under this agreement Mr. McArdle has transferred the domain name to the Respondent and has asked for a purchase price in the amount of USD 500.00. Although the Complainant has accepted this breach of contract, the Respondent has failed again to transfer the domain name "deutschetelecom.net". This behavior in addition with the lack of use of domain name indicates the profit-seeking motives of the Respondent who seems to be somehow connected with Mr. McArdle".

- "…There is no evidence that the disputed domain name bears a relationship to any business or other activity of the Respondent. This indicates that the Respondent has registered the domain name primarily for the purpose of disrupting the business of the Complainant and therefore in a lack of good faith".

The Respondent failed to submit any Response following receipt of the Notification of Complaint and is therefore in default.

The Complainant holds a valid and famous trademark "DEUTSCHE TELEKOM". This trademark has acquired secondary meaning and effectively identifies the Complainant as the main German telecommunications services provider.

The Domain Name <deutschetelecom.net> is phonetically identical and visually confusingly similar to the trademark DEUTSCHE TELEKOM. The replacement of the letter "k" by a "c", corresponding to an English spelling of the word "Telekom", constitutes a negligible difference typical of typosquatting.

The panel therefore considers that the Domain Name is confusingly similar to the trademark held by the Complainant in the meaning of paragraph 4(a)(i) of the Policy.

The Complainant has the onus of proof on Section 4(a)(ii) of the Policy. In its Complaint, the Complainant denied ever licensing any right into its Deutsche Telekom trademark to the Respondent. On the other hand, the Respondent has not actively used the Domain Name. Absent any explanation from the Respondent or other circumstance that would justify the Respondent's registration of the Domain Name, the Panel holds that the Respondent does not have any right or legitimate interest in the Domain Name.

For the sake of completeness, the Panel notes that none of the e-mails sent by Mr. McArdle or one of his alias to the Complainant contains any explanation for the registration of the Domain Name. A reference was sometimes made to an unsubstantiated "project", but only to justify the registrant's quest for money.

Paragraph 4 (b) of the Policy states a number of circumstances under which the registration and use of a domain name is in bad faith:

(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent' documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted 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.

There is little doubt that the behaviour of Mr. McArdle in the previous aborted proceedings would have fallen within the conditions of paragraph 4(b)(i) of the Policy. Repeatedly, Mr. McArdle attempted to sell the Domain Name for a price substantially higher than the out-of-pocket expenses related to the registration or acquisition of the Domain Name.

The issue is to determine whether the behaviour of the Respondent alone constitutes bad faith or whether the behaviour of Mr. McArdle can be imputed to the Respondent. In this respect, one has to note that the Complaint does not make such a distinction and does not allow an analysis of the behaviour of the Respondent alone. The Complaint assumes that Mr. McArdle and the Respondent are the same person because Mr. McArdle or one of his alias replied to the Complainant's request for explanations after the so-called transfer of the Domain Name to the Respondent. It therefore concludes that the Respondent acted in bad faith. In this respect, the Complaint quotes numerous precedents to support the conclusion that bad faith may result from other circumstances than those mentioned in paragraph 4(b) of the Policy.

It is a fact that previous panels considered that other circumstances may constitute bad faith. For instance, in the now famous <telstra.org> case ("Telstra Corporation Limited v. Nuclear Marshmallows" WIPO Case No. D2000-0003) the panel held that "the circumstances identified in paragraph 4(b) are "without limitation" – that is, paragraph 4(b) expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith". In that specific case, the panel then proceeded to determine under which circumstances inaction (passive holding of a disputed domain name) could constitute use in bad faith. It concluded that the particular circumstances of the case led to the conclusion that the passive holding of the domain name in such case amounted to acting in bad faith because:

In the present case, a number of circumstances indicate that the said Mr. John McArdle and the Respondent may be the same person. The most relevant circumstance indicating a likelihood of similarity between the registrants is the fact that someone replied to the Complainant's queries sent to the e-mail addresses of Mr. McArdle, after the transfer to the Respondent. However, this may mean that Mr. McArdle is willing to sell an asset it no longer has, or that the person who replied acted as a representative for the Respondent, or that indeed, Mr. McArdle and the Respondent are one and the same person.

Other elements, may also hint towards a likelihood of similarity between the registrants:

- the use of an Indian public domain although the said Mr. McArdle was allegedly domiciled in New Zealand (jfm@indiatimes.com),

- the fact that the Notification of Complaint sent by courier to the Respondent was signed off by a "John",

- the fact that neither Mr. McArdle nor the Respondent made any active use of the Domain Name,

and a repeated pattern of concealment of identity:

- the fact that Mr. McArdle used various public domain addresses instead of a private domain e-mail address (mcardle@profitgate.net, jfm@indiatimes.net, manor.autosearch@gmx.de),

- the fact that the e-mail address mentioned by the Respondent in the WHOIS page of the Registrar (whittawhitta@hotmail.com) had permanent fatal errors.

However again, and in the absence of further evidence, the Panel cannot hold these circumstances alone as conclusive. The Panel however recognizes that in practice, seeking and obtaining evidence of an identity between two such registrants may be impossible or too burdensome to be a reasonable option or requirement.

What the panel finds conclusive in the present case, is the fact that the Respondent who received a hard copy of the Complaint, did not contest the allegations of the Complainant. As specified in paragraph 5(a) of the Rules, the Respondent has a duty to respond to the allegations of the Complainant. It chose not to do so and should therefore accept the consequences of its choice pursuant to paragraph 14 of the Rules.

In the present case,

- the Respondent did not contest the allegation of identity or connection between the said Mr. McArdle and itself,

- the Respondent did not contest the fact that discussions took place between a Mr. John Cradle and the Complainant after the alleged transfer of the Domain Name to the Respondent,

- the Respondent did not give any explanation as to the cause and circumstances for the transfer of the Domain Name,

- last but not least, the Respondent did not explain what interest it might have had into the Domain Name when it acquired it.

The outcome is that either the said Mr. McArdle and the Respondent are the same person, or the said Mr. McArdle or John Cradle acted as authorized representative of the Respondent. Both cases lead to the conclusion that the Respondent is bound by the declarations and actions taken by Mr. McArdle, Cradle or whoever communicated with the Complainant in this matter.

In conclusion the Panel finds that:

- the Respondent, who could not ignore that the Domain Name <deutschetelecom.net> was confusingly similar to the widely recognized trademark of the Complainant, nevertheless registered and used (passively) it,

- the Respondent repeatedly attempted selling the Domain Name for valuable consideration in excess of his out-of-pocket expenses in the meaning of paragraph 4(b)(i) of the Policy, and

- the Respondent took active steps to conceal its true identity,

all actions which do constitute use of the Domain Name in bad faith.

For the above mentioned reasons, the Panel decides that:

- the Domain Name registered by the Respondent is confusingly similar to the trademark to which the Complainant has rights;

- the Respondent has no rights or legitimate interests in respect of the Domain Name; and

- the Domain Name <deutschetelecom.net> has been registered and is being used in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel orders that the Domain Name <deutschetelecom.net> be transferred to the Complainant.