WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Deutsche Telekom AG v. Kerstin Ice

Case No. D2003-0688

 

1. The Parties

The Complainant is Deutsche Telekom AG, Bonn, Germany, represented by Lovells, Germany.

The Respondent is Kerstin Ice, Indiana, United States of America, represented by Mr. Gückel, Germany.

 

2. The Domain Name and Registrar

The disputed domain name <tele-kom.com> (the "Domain Name") is registered with Network Solutions, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") by e-mail on September 2, 2003 and by hardcopy on September 4, 2003. On September 3, 2003, the Center transmitted by e-mail to Network Solutions, Inc. a request for registrar verification in connection with the domain name at issue. On September 8, 2003, Network Solutions, Inc. transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, 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 September 9, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was scheduled as per October 3, 2003, at which date the Response was filed with the Center by e-mail. A hardcopy of the Response followed on October 8, 2003.

The Center appointed Bernhard F. Meyer-Hauser as the sole panelist in this matter and transferred the case file on October 9, 2003. The same day, the Center transmitted by e-mail to the Parties a Notification of Appointment of the Panel stating that the Projected Decision Date was October 23, 2003.

The Panel finds that it was properly appointed and constituted in accordance with the Policy, the Rules, and the Supplemental Rules.

On October 10, 2003, the Complainant submitted by e-mail further information regarding the scope of its trademarks to the Center. The Administrative Panel indicated to the Center that it was willing to hear the additional submission. Consequently, a deadline as of October 15, 2003, was given to the Respondent for comments with regard to the additional submission of the Complainant, and comments were received from Respondent within the deadline.

 

4. Factual Background

The following facts appear from the Complaint and the Response, including their annexes, as well as further documents submitted by the Parties.

The Complainant is Europeís largest telecommunications company, incorporated under the laws of Germany. The Complainant continuously pursues the internationalization of its Deutsche Telekom Group, building up various strategic shareholdings outside of Europe, in Central and Eastern Europe, among others. The Complainant currently is present in more than 65 countries around the globe. T-Mobile International, a subsidiary of the Complainant, is a major player in the international market of mobile communications.

The Complainant is the holder of various German, European, and international trademarks in the denomination "TELEKOM" (DE 02008716, DE 39615506, DE 30021663, DE 30043798; IR 00663775, IR 00755707; EU 2004679). Moreover, the Complainant is the registrant of the domain names <telekom.de> and <tele-kom.de>, among others.

The Respondent is a natural person domiciled in the U.S.A. The Domain Name was transferred to the Respondent from her cousin and previous holder, who had the Domain Name transferred from the original registrant and first holder. Both previous owners transferred the Domain Name after receiving a cease and desist letter from the Complainant. No cease and desist letter was sent to the Respondent.

The Respondent purports to own the Domain Name in order to support the two previous owners with the marketing of their music and related products and services, in particular in the U.S. market. The said music and related products are primarily marketed by the original registrant, the holder of various (other) domain names, used to offer music and other products and services.

 

5. Partiesí Contentions

A. Complainant

The Complainant contends that:

- the Domain Name is identical or confusingly similar to trademarks and service marks in which the Complainant has rights; and

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

- the Domain Name was registered and is being used in bad faith.

For these reasons, the Complainant requests the Domain Name to be transferred to the Complainant.

Additional respective contentions of the Complainant are included in the following discussions and findings.

B. Respondent

The Respondent contends that:

- the Domain Name is not identical or confusingly similar to the Complainantís trademarks and service marks; and

- the Respondent has a legitimate interest in respect of the Domain Name; and

- the Domain Name was not registered and is not being used in bad faith.

For these reasons, the Respondent requests that the Complainantís requested relief be denied.

Additional respective contentions of the Respondent are included in the following discussions and findings.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

"(i) 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

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith."

A. Identical or Confusingly Similar

The Domain Name at issue is <tele-kom.com>. As set forth above, and not challenged by the Respondent, the Complainant has rights in various national and international trademarks "TELEKOM".

It is fairly obvious that the Domain Name is identical or, at the very least, confusingly similar to the Complainantís trademark "TELEKOM". UDRP case law has established that, in determining identity or confusing similarity under Paragraph 4 (a)(i) of the Policy, the generic top-level domain must be excluded from consideration (see, e.g., Rubyís Diner, Inc. v. Joseph W. Popow, WIPO Case No. D2001-0868) and minor omissions or alterations of punctuation, e.g., hyphenating a denomination at a certain point, do not sufficiently change the trademarketed word to negate a finding of identity or confusing similarity (e.g., Barneyís Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059).

Although, as the Respondent sets out, the mark "TELEKOM" is of a fairly descriptive character with regard to goods and services in the telecommunications industry, the Panel, in its limited jurisdiction, is bound by the Complainantís trademark registrations.

Thus, the Panel holds the Domain Name identical to the above referenced trademarks of the Complainant. The Complainant has met the burden of proof as established by Paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

According to Paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the Domain Name, among others, by showing any of the following elements:

"(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue."

The Complainant asserts that the Respondent is neither a representative or licensee of the Complainant, nor otherwise authorized to use the Complainantís marks. The Complainant moreover contends that 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 because the Domain Name, by way of Domain Name forwarding, leads to the website of Telekom Malaysia at <telekom.com.my> and has no content of its own.

The Respondent maintains that the denomination "tele-kom" stands for the abbreviations of "telepathic komponents", describing a sort of "telepathic music" the Respondent intends to market under the Domain Name. "Telepathic" is English while "komponents" is supposedly derived from the German word "Komponenten", meaning "components" in English. The Respondent describes this combination of a truncated German word and an English word as being original. This may be true. However, the Panel is not convinced that this explanation is genuine. The misspelling of the German word "Komponenten" into "komponents" does not really make sense, and the abbreviation "kom" is used in German speaking countries for "Kommunikation" rather than for "Komponenten" or the (non-existing German word) "Komponents".

On October 11, 2003, a visit by the Panel on the disputed website revealed that the Respondent is now setting up "www.tele-kom.com" as a platform to download mp3 music and that the domain forwarding function to the website of Telekom Malaysia is no longer in effect. Also, the denomination "telepathic komponents" is now used as the title of the website.

Nevertheless, it is a fact that the use of the website in its present form only commenced after notice of the dispute was received. Also, the simple format of the webpage does not suggest a well-planned business venture. The same impression is created by the original registrantís purported business plan which appears to be a fabricated document for the purpose of responding to the Complaint. Although the so-called business plan is addressed to a banking institute, the Panel doubts that a bank in fact would consider such paper for the purpose of advancing money. The business plan does not describe real activities that are intended to be made over the disputed website or any other websites mentioned therein. The expected yearly turnovers which are listed for each website Ė including the disputed one - are without any commercial support. Furthermore, it is difficult to believe that the business concept, which allegedly is to sell music, can be achieved through websites designated as "www.SexTo.Biz", "www.CloneAid.de", "www.Alt-Gold.com", and "www.GenTechnics.com" that are all mentioned (among others) in the business plan. Therefore, a bona fide offering of goods and services, or demonstrable preparations thereto, have not been established by the Respondent.

The Respondent cites Deutsche Telekom AG v callisto germany.net, WIPO Case No. D2000-0951 in support of her position. However, the circumstances of that case were substantially different from the present case. The website under the then disputed domain name, in contrast to the current case, had already been in use at the time of the administrative proceedings, and that use was considered a legitimate interest by the Panel. In the current case, the website under the Domain Name was not active beyond a forwarding function to another website, and a legitimate interest to use cannot be seen by the Panel.

Thus, the Panel concludes that the Respondent has no rights or legitimate interests in the Domain Name, and the Complainant has fulfilled its burden of proof under Paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The third element to be established by the Complainant is that the Domain Name has been registered and used in bad faith.

Paragraph 4(b) states the following four (non-exclusive) circumstances which, if found to be present by the Panel, are deemed to provide evidence of bad faith in registering and using the Domain Name:

"(i) circumstances indicating that you [Respondent] have registered or you [Respondent] have 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 the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Domain Name; or

(ii) you [Respondent] have 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 you have engaged in a pattern of such conduct; or

(iii) you [Respondent] have registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or your location."

The Complainant alleges that the Respondent and the two previous owners have registered and used the Domain Name in bad faith. In Complainantís view, the Respondent could not have been unaware of the Complainantís marks and the Domain Nameís interference with the respective rights of the Complainant when the registration was made. Furthermore, the Complainant notes that a passive holding of a domain name in itself constitutes bad faith use.

The Respondent contends that she had all along planned to use the Domain Name to market products and services very different from the Complainantís and had not intended to profit in any way from the identity of the Domain Name with the Complainantís trademarks.

Whereas the Respondent does not specifically describe her motivation at the time she acquired the rights in the Domain Name, she describes the motivations of the original registrant when he registered the Domain Name in dispute. The Panel deems the original registrantís motivations to be those of the Respondent as well since the two are business partners.

At the time of registration, the Respondent and her German business partners must have been aware of the Complainantís trademarks which are famous throughout Germany and abroad. In the Panelís view, the original registrant and Respondent also knew the advantages of linking an identical Domain Name to the Complainantís trademark. the original registrant, and through him the Respondent herself, stated in their Response that they had chosen <tele-kom.com> because "using the generic term tele-kom, (what Everybody brings together with telecommunications) for a complete different thing, like music or telepathic or even hypnosis, would be a great marketing idea for USA and will be successful during the next 3 years". Hereby, Respondent implicitly admits her intention to profit from Complainantís goodwill and reputation connected with its trademarks. The "marketing idea", in fact, seems to have been to attract business by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website which evidences bad faith in accordance with Paragraph 4(b)(iv) of the Policy.

Moreover, the Panelís impression is reconfirmed by the previous ownersí conduct, transferring the Domain Name each time after having received a cease and desist letter from the Complainant. A person believing to have a legitimate interest in a domain name, normally has no need to transfer it to another (closely related) person, and absent a reasonable explanation for such transfer, this behavior may also give rise to a suspicion of bad faith.

Therefore, the Panel concludes that the requirements of Paragraph 4(b) of the Policy have been sufficiently made out by the Complainant and that the Respondent's bad faith registration and use of the Domain Name has been proven.

 

7. Decision

For all the foregoing reasons and facts discussed, the Panel holds that the Domain Name is identical to the registered trademarks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Domain Name has been registered and is being used in bad faith.

In accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel therefore requires the Domain Name <tele-kom.com> to be transferred to the Complainant.

 


 

Bernhard F. Meyer-Hauser
Sole Panelist

Dated: October 21, 2003