WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Deutsche Telekom AG v. Timmy Comeau
Case No. D2003-0377
1. The Parties
The Complainant is Deutsche Telekom AG, Bonn, of Germany, represented by Lovells of Germany.
The Respondent is Timmy Comeau, Lower Saulinierville, of Canada.
2. The Domain Name and Registrar
The disputed domain name <tonlineshop.com> is registered with Melbourne IT trading as Internet Name Worldwide.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 16, 2003. On May 16, 2003, the Center transmitted by email to Melbourne IT trading as Internet Name Worldwide a request for registrar verification in connection with the domain name at issue. On May 19, 2003, Melbourne IT trading as Internet Name Worldwide transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. 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. Accordingly, the Center notified the Respondentís default on June 13, 2003.
The Center appointed Peter G. Nitter as the sole panelist in this matter on June 17, 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 <tonlineshop.com> was registered by the Respondent on June 26, 2002.
The Complainant is one of the largest telecommunication companies in Europe and covers the entire spectrum of telecommunications.
The Complainant is continuously driving ahead the internationalization of the Deutsche Telekom Group with a variety of strategic shareholdings. Deutsche Telekom has a range of shareholdings in Central and Eastern Europe and the USA. Over the past years, Complainant has completed or initiated transactions amounting to 66 billion US dollars.
The Complainantís subsiduary 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.
The Complainant and its subsiduary T-Online carry on the business of providing Internet and related services. In this sector the Complainant and its products enjoy a world wide reputation with nearly 11 million customers. In addition to access-providing-services, T-Online offers a broad range of multimedia-services, including web-hosting, email-services, online-banking and international roaming access. Therefore, the public has come to associate the distinctive name "T-Online" exclusively with the Complainant.
The Complainant is the proprietor of the international trademark T-ONLINE, registered under the Madrid System for the International Registration of Marks with registration no. 650171 and a priority date of September 27, 1995 and registration no. 763492, as well as 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 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 September 27, 1995 and of the German trademark T ONLINE (DE 30119032) with a priority date of March 21, 2001. Ref. Annex F to J to the Complaint.
The Complainant is also holder of the Canadian Trademark T-ONLINE (application no. 794 886) with a filing date of October 13, 1995, ref. Annex K to the Complaint.
All of these trademarks T-ONLINE and T ONLINE are registered among others for the following goods and services:
CL09: Electric, electronical, optical, measuring, signaling, controlling or teaching apparatus and instruments (as far as included in class 9); apparatus for recording, transmission, processing and reproduction of sound, images or data; machine run data carriers; automatic vending machines and mechanism for coin operated apparatus; data processing equipment and computers.
CL16: Printed matter; instruction and teaching material (except apparatus); stationery (except furniture).
CL36: Financial services; real estate services.
CL37: Services for construction; installation maintenance and repair of equipment for telecommunication.
CL38: Telecommunication services; rental of equipment for telecommunication.
CL41: Instruction and entertainment services; organization of sporting and cultural events; publication and issuing of printed matter.
CL42: Computer programming services; data base services especially rental of access time to and operation of a data base; rental services relating to data processing equipment and computers; projecting and planning services relating to equipment for telecommunication.
The Complainant uses the trademark T-ONLINE for all of its online-activities, which are even vaster than the above mentioned goods and services.
The Complainant is registrant of the following Ė among others Ė domain names:
<t-online.com/ .net/ .org/ .info/ .biz/ .de> as well as <tonline.com/ .net/ .org/ .info/ .biz/ .de>.
In addition, the Complainant is Ė inter alia Ė holder of the International Trademark "T-SHOP" (registration no. 785 333) with a priority date of June 11, 2000, and owner of the domain names <tonlineshop.de/ .net>, ref. Annex L to the Complaint.
5. Partiesí Contentions
The domain name <tonlineshop.com> is confusingly similar to the Complainantís trademarks T(-)ONLINE. The only difference being the fact that the "T" is not hyphenated. This distinction does not change the likelihood of confusion.
It is highly likely that Internet users will believe that the disputed domain name might provide a Internet service of the Complainant as provided under the domain name <tonlineshop.de>.
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 Complainantís marks.
The Respondent does not use the domain name for a bona fide offering of goods or services and is not making a legitimate non-commercial or fair use of it.
The domain name has never been in active use. The inactivity demonstrates that the Respondent has not spent any effort to begin a legitimate use of the domain name.
Given the fame and reputation of the Complainantís marks it is evident that the disputed domain name was registered with the trademarks in mind.
Since the registration the domain name has not been used in any legitimate way. This prevents the Complainant from registering the disputed domain name. According to previous panel decisions active use is not necessary to prove bad faith. A passive holding of a domain name may prove that the domain name has been registered and are being used in bad faith.
The Complainant sent the Respondent a "cease and desist" letter dated January 30, 2003. The Respondent never responded satisfyingly. After an email dated February 13, 2003, in which the Respondent promised to cancel the disputed domain name, the Respondent sent a second email asking for undefined reimbursements, ref. Annex O to the Complaint. In order to settle the matter amicably, the Complainant offered a lump sum of USD 1000 to the Respondent to cover his costs. The Respondent failed to respond, still insisting on undefined reimbursements.
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 reply to the Complainantís contentions.
6. Discussion and Findings
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 <tonlineshop.com>.
The Complainant has registered the trademarks "T ONLINE" and "T-ONLINE".
The trademark registrations are international. The trademark "T-ONLINE" is also registered as Canadian and German trademarks.
The domain name consists of the trademark of the Complainant to which the general phrase "shop" is added as a suffix. The ability of this general phrase, "shop", to distinguish the domain name from the trademark of the Complainant is limited. The phrase "shop" is a descriptive addition. The trademarks "T-ONLINE" and "T ONLINE" are distinctive, as the letter "T" does not have a meaning.
Reference is made to the following decisions, which are particularly relevant: WIPO Case No. D2000-0253 (domain name <quixtarmortage.com> is "legally identical" to QUIXTAR trademark), and WIPO Case No. D2002-0363 (domain name <dellaboutus.com> confusingly similar to DELL trademark.).
The domain name <tonlineshop.com> is thus found to be confusingly similar to the trademarks "T-ONLINE" and "T ONLINE" in which the Complainant has rights.
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 website 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 <tonlineshop.com> for the purposes of paragraph 4 (c) of the Uniform Policy.
The inclusion of the general phrase "shop" in the domain name does not create a legitimate interest.
The panel draws the inference from the Respondentís failure to respond to this administrative proceeding, that the Complainant is correct in its assertion that the Respondent has no rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
It can not reasonably be argued that the Respondent could have been unaware of the trademark when registering the domain name.
In light of the long use and fame of the Complainantís marks, the Respondentís conduct to this date is evidence of bad faith on the part of the Respondent.
"T-ONLINE" and "T ONLINE" are trademarks which are distinctive due to the "T" which is used as a prefix.
Since the Respondent has formed the domain name <tonlineshop.com> by only adding "shop" to the registered marks "T-ONLINE" and "T ONLINE", one can infer that the Respondentís motivation was to exploit user confusion as to source, sponsorship, affiliation or endorsement of any "T-ONLINE" and/or "T ONLINE" branded product or service.
The Respondent has owned the domain name registration since June 26, 2002, approximately for one year, 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. Reference is made to WIPO Case No. D2002-0366 and WIPO Case No. D2000-0003.
Another strong indication of the registration and use of the domain name in bad faith are circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purposes of selling, renting or otherwise transferring the domain name to the Complainant who is the owner of the trademarks, for valuable consideration in excess of his documented out-of-pocket costs directly related to the domain name. The Respondentís offer of the domain name for an undefined sum although he had already accepted to cancel the domain name without any reservation indicates bad faith.
The Panel concludes that the Complainant has established this element.
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, <tonlineshop.com> be transferred to the Complainant.
Peter G. Nitter
Date: July 1, 2003