WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Deutsche Telekom AG v. C. J.
Case No. D2004-0132
1. The Parties
The Complainant is Deutsche Telekom AG, Bonn, Germany, represented by Lovells Boesebeck Droste, Germany.
The Respondent is C. J., Ludwigsburg, Germany.
2. The Domain Name and Registrar
The disputed domain name <t-mobile24.com> is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 19, 2004. On February 20, 2004, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On February 20, 2004, Network Solutions, LLC 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, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 4, 2004. The Center verified that the Complaint together with the amendment to 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 March 4, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was March 24, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 25, 2004.
The Center appointed Torsten Bettinger as the sole panelist in this matter on April 6, 2004. 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 Complainant is Europe's largest telecommunications company and covers the entire spectrum of modern telecommunications. The Complainant's daughter T-Mobile International is one of the largest GSM mobile communications provider in the world. "T-Mobile" is the corporate name under which the Complainant's business in the mobile communications sector is conducted.
The Complainant is the registered owner of the following German and Community trademark registrations:
- T-MOBILE, German Trademark Registration No. 39638168, issued on October 8, 1996;
- T-MOBILE German Trademark Registration No. 300 69 306, issued on January 16, 2001;
- T-MOBILE + Device, German Trademark Registration No. 396 38 169, issued on November 6, 1996;
- T-MOBILE, Community Trademark 00485441, issued on February 6, 2004.
The Complainant has also registered and uses the following Internet domain names: <t-mobile.com>, <t-mobile.de> and <tmobile.de>.
5. Parties' Contentions
The Complaint asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.
In reference to the element in paragraph 4(a)(i) of the Policy, the Complaint asserts that the domain name <t-mobile24.com> is virtually identical and confusingly similar to Complainant's famous T-MOBILE marks in that the domain name consists entirely of the distinctive term T-MOBILE, and that the mere fact of adding the number "24" to Complainant's trademark cannot render the domain name different from Complainant's trademark."
In reference to the element in paragraph 4(a)(ii) of the Policy, the Complainant states that the domain name is not used for any bona fide offering of goods or services and that there is no indication that the Respondent was known by the name T-MOBILE prior to registration of the domain name. The Complainant further states that the Respondent is not authorized or licensed to use the Complainant's mark T-MOBILE.
In reference to the element in paragraph 4(a)(iii) of the Policy, the Complaint states that evidence of bad faith registration and use of the domain name in dispute in this case is established by the fact that the Respondent, prior to his adoption and use of the domain name <t-mobile24.com> was aware that Complainant was the owner of the famous T-MOBILE marks and that he registered the domain name with the intent to benefit from the reputation of the Complainant's famous trademarks.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a), the Complainant must prove that each of the following three elements is present if it is to prevail:
(i) The Respondent's "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 with respect to the domain name;" and
(iii) The "domain name has been registered and is being used in bad faith."
A. Identical or Confusingly Similar
The Respondent has registered the domain name <t-mobile24.com>. This domain name is identical to Complainant's trademark T-MOBILE, except that the domain name adds the generic top-level-domain ".com" and the number "24."
It is well established that the specific top level of the domain name such as ".org," ".net" or ".com" does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.
The addition of the number "24" has also no distinguishing capacity as it will be understood by the public that the services rendered by the domain name holder are available "24" hours a day.
The Panel thus finds that the domain name <t-mobile24.com> is confusingly similar to the trademark in which the Complainant has prior exclusive rights.
The Respondent has not provided evidence of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name. The Complainant showed that the Respondent has neither a license nor any other permission to use the name in dispute. In the absence of evidence brought forward by the Respondent the Panel cannot find a legitimate interest.
The Panel therefore concludes that Respondent has no rights or legitimate interests in the domain name <t-mobile24.com> and that the requirement of the paragraph 4(a)(ii) of the Policy is satisfied.
The fact that the Respondent has chosen not to submit a Response is particularly relevant to the issue of whether the Respondent has registered and is using the domain name in bad faith. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a Panel shall draw such inferences as it considers appropriate from the failure of a party to comply with a provision or requirement of the Rules. This Administrative Panel finds no exceptional circumstances for the Respondent's failure to submit a Response. The Panel draws from this failure the following two inferences:
(i) the Respondent does not deny the facts which the Complainant asserts, and
(ii) the Respondent does not deny the conclusions which the Complainant asserts can be drawn from these facts.
Nevertheless, the Panel still has the responsibility of determining which of the Complainant's assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see, Inter-IKEA Systems B.V. v. Hoon Huh, WIPO Case No. D2000-0438).
Under paragraph 4(b) of the Policy, the Complainant may demonstrate that the domain name was registered and is being used in bad faith by showing any of the following circumstances, in particular but without limitation:
(i) circumstances indicating that the Respondent has registered or 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 its 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 it 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 its website 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 its website or location or of a product or service on its website or location.
The Panel notes that the Complainant has provided no evidence to satisfy any of the above four criteria, nor has it presented evidence that the domain name at issue is used by the Respondent as required by paragraph 4(a)(iii) of the Policy. However, in number of cases, and in certain circumstances, mere passive holding has been held to constitute use of the domain name in bad faith, (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574).
The Panel has considered whether, in the circumstances of this particular case, the passive holding of the domain name by the Respondent would amount to the Respondent acting in bad faith. The Panel concludes that it does. The particular circumstances of this case which lead to this conclusion are:
(i) The Complainant's trademark has a strong reputation and is widely known in Germany. It therefore appears that the Respondent has registered and used the domain name <t-mobile24.com> in order to create an association with the Complainant and as a means of attracting users to his future website;
(ii) The Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the domain name. Registration of a well-known trademark by a party with no connection to the owner of the trademark and no authorization and no legitimate purpose to use the mark is a strong indication of bad faith.
Taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate and constitute an infringement of the Complainant's rights under the German trademark law. In light of these particular circumstances, the Panel concludes that the Respondent's registration and passive holding of the domain name, in this particular case, satisfies the requirements of paragraph 4(a)(iii) of the domain name being registered and used in bad faith by the Respondent."
The Panel therefore concludes that also the requirement of paragraph 4(a)(iii) of the Policy has been met.
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, <t-mobile24.com> be transferred to the Complainant.
Dated: April 20, 2004