WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Deutsche Telekom AG v. Luis Javier Collazos
Case No. D2003-0371
1. The Parties
The Complainant is Deutsche Telekom AG of Bonn, Germany, represented by Lovells of Germany.
The Respondent is Luis Javier Collazos of Madrid, Spain.
2. The Domain Name and Registrar
The disputed domain name <wwwtonline.com> is registered with iHoldings.com Inc., d/b/a DotRegistrar.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 15, 2003. On May 16, 2003, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain name at issue. On May 16, 2003, iHoldings.com Inc. d/b/a DotRegistrar.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 May 20, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was June 9, 2003. The Respondent did not submit any response within this date. Accordingly, the Center notified the Respondentís default on June 11, 2003.
A late Response was filed with the Center on June 12, 2003.
The Center appointed Peter G. Nitter as the sole panelist in this matter on June 25, 2003. 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 domain name <wwwtonline.com> was registered by the Respondent on August 31, 2001.
The Complainant is one of the largest telephone companies in Europe, and covers the entire spectrum of telecommunications.
The company T-Online is a subsidiary of Deutsche Telekom AG, and is providing Internet and related services. T-Online also offers a broad range of multimedia-services, including web-hosting, email-services, online-banking and international roaming access.
The Complainant and its products have nearly 11 million customers.
The Complainant has registered the international trademark T-ONLINE, registered under the Madrid System for the International Registration of Marks with registration no. 650171 with a priority date of September 27, 1995.
The Complainant has also registered the international trademark T ONLINE, registered under the Madrid System for the International Registration of Marks with registration no. 653891 and a priority date of July 11, 1995, ref. Annex C to E to the Complaint.
In addition the Complainant is Ė inter alia Ė holder of the European Community trademark T-ONLINE (registration no. 214528) with a priority date of April 1, 1996, of the European Community trademark T ONLINE (registration no. 214478) with a priority date of April 1, 1996, of the German trademark T-ONLINE (application and registration no. DE39539437) with a priority date of March 21, 2001, ref. Annex F to J to the Complaint.
The Complainant uses the trademark T-ONLINE for all of its online-activities, which are vast.
The Complainant has also registered "t-online.com/ .net/ .org/ .info/ . biz/ .de" as well as "tonline.com/ .net/ .org/ .info/ .biz/ .de".
5. Partiesí Contentions
The domain name <wwwtonline.com> is confusingly similar to the Complainantís trademarks TONLINE and T-ONLINE.
The only difference being the prefix "www" and the fact that there is no hyphen after the "T".
The "www" might be understood as the short form of World Wide Web.
The registration of the domain name <wwwtonline.com> might lead to a misrepresentation that the domain somehow is connected with, associated or authorized by the Complainant when it is not.
An Internet user who forget to insert "." when inserting "www.tonline.com" in order to view Complainantís website, will enter Respondentís web site. This is a typical case of "typo-piracy".
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 Complainantís marks.
The Respondent does not use the disputed domain name for a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use of it. The web site which the domain name leads to is not active.
Given the fame and reputation of the Complainantís marks it is evident that the disputed domain name was registered with these trademarks in mind.
Since the registration in August 2001, the domain name has not been used in any legitimate way. This prevents the Complainant from registering the disputed domain name.
Before the administrative proceeding, the Complainant sent the Respondent a "cease and desist" letter dated April 3, 2003. The Respondent never responded to this letter.
There is no evidence that the disputed domain name bears a relationship to any business or other activity of the Respondent.
The Respondent did not submit any response within the due date.
6. Discussion and Findings
6.1 Procedural matters
The Panel has to decide first whether it should take the Respondentís Response of June 12, 2003, into consideration, even though it was sent after the end of the period for filing the response. Paragraph 5(d) of the Rules provides that "at the request of the Respondent, the Provider may, in exceptional cases, extend the period of time for the filing of the response." The general power of the Panel to extend time limits in paragraph 10(c) of the Rules is likewise exercisable only in "exceptional cases."
The Panel considers that this is not an exceptional case. In particular, there is no reason to believe that the Respondent did not have a fair opportunity to file its response within the time limit. No reasons for exceptionality are given by the Respondent.
The Panel also has power under paragraph 12 of the Rules to request further statements or documents from the parties at its sole discretion. However, the Panel considers that this provision should not be stretched in order to circumvent the restrictions on extending time limits provided in paragraphs 5(d) and 10(c) of the Rules.
Be that as it may, the Panel is aware of the contents of the late filing from the Respondentís administrative contact and it should be pointed out that the filing would have had no impact on the outcome of this case. The Panel finds the explanation as to why the disputed domain name should not be confusingly similar, and the explanation as to why the administrative contact of the domain name has a legitimate interest in the domain name little convincing
6.2 Substantial matters
Paragraph 4(a) of the Policy lists three tests, which a complainant must satisfy in order to succeed. The Complainant must satisfy 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 such domain name; and
(iii) the domain name has been registered in bad faith and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name is <wwwtonline.com>.
The Complainantís trademarks are T-ONLINE and T ONLINE.
Many prior Panel decisions have considered domain names that consist of the prefix "www" affixed to a trademark and have concluded that such domain names are substantially similar to the relevant trademark. The Panel refers to the decision in WIPO Case No. D2003-0273 (CSC Holdings, Inc. v. Elbridge Gagne) and to the decisions referred to in that decision.
The "www" is the well-known acronym for "world wide web" and thus has no distinguishing capacity in a domain name context.
The use of "www" at the beginning of a domain name causes confusion whenever a very common and well-known typing error occurs: the typist omits the period (".") which would normally separate a domain name from the "www" field.
This Panel concludes that <wwwtonline.com> is confusingly similar to T-ONLINE and T ONLINE.
B. Rights or Legitimate Interests
Complainant has not licensed or otherwise permitted Respondent to use its trademark or to apply for any domain name incorporating any such mark.
The domain name is currently inactive, and thus not used in connection with a bona fide offering of goods or services. There is no evidence that the Respondent has made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. The Respondent is not commonly known by the domain name.
The Respondent has merely held the contested domain name passively. The Respondentís web site is not operational and it never has been.
There is no evidence before the Panel in this case that the Respondent has any legitimate interest in the domain name <wwwtonline.com> for the purposes of paragraph 4 (c) of the Policy.
The inclusion of the prefix "www" at the beginning of the domain name does not create a legitimate interest.
The panel concludes that the Respondent has no rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
The third element that must be established under the UDRP is that the Respondent "registered and used" the domain name in "bad faith." There is sufficient evidence of bad faith for the Complainant to have met its burden in this dispute. In particular, the Panel finds four distinct grounds on which bad faith may be inferred.
(i) No response to Complainantís cease-and-desist letter
On April 3, 2003, the Complainant sent a cease-and-desist letter to Respondent.
The Respondent did not answer this letter. The failure to respond to a Complainantís efforts to make contact provides a strong support for the determination of bad faith registration and use.
(ii) Use of the "www" prefix Ė intent to confuse
The use the prefix "www" in addition to Complainantís mark, strongly indicates that the registration is made as an intentional effort to gain Internet traffic from the typing errors of users seeking the Complainantís website.
(iii) Lack of use of the domain name
The Respondent has owned the domain name registration since August 31, 2001, approximately for two years, without using it by creating a web site, but continues to retain it. Several panels have held that, under appropriate circumstances, passive holding evidences bad faith use, e.g., WIPO Case Nos. D2002-0366 (Pfizer Inc. v. Order Viagra Online) and D2000-0003 (Telstra Corporation Limited v. Nuclear Marshmallows).
(iv) Information about Complainantís marks
The Panel finds that the Respondent most likely knew about one of the two trademarks T-ONLINE or T ONLINE. This is supported by the fact that T-ONLINE is an invented combination of a letter and a word.
The Panel concludes that the domain name was registered and used in bad faith.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <wwwtonline.com> be transferred to the Complainant.
Peter G. Nitter
Dated: July 9, 2003