WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Deutsche Telekom AG v. Terrabit Working Group
Case No. D2004-0153
Complainant is Deutsche Telekom AG, of Bonn, Germany, represented by Lovells, Munich, Germany.
Respondent is Terrabit Working Group, of Charlottetown, Canada, represented by James Deighan, Atlantic Institute of Technology, Inc., Charlottetown, Canada.
2. The Domain Name und Registrar
The disputed domain name, <t-dsl.net> (the "Domain Name"), is registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") by e-mail on February 26, 2004 and in hardcopy on March 1, 2004. On February 27, 2004, the Center transmitted by e-mail to eNom, Inc. (the "Registrar") a request for registrar verification in connection with the Domain Name. To date the Registrar has not responded to the Center's request. The Panel nevertheless finds that Respondent in this proceeding is the registrant of the Domain Name and that the contact details for the administrative, billing, and technical contact, as listed in the Complaint and the WHOIS database, are correct.
The Center verified on March 2, 2004 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").
According to paragraphs 2(a) and 4(a) of the Rules, the Center formally notified Respondent of the Complaint, commencing the Administrative Proceeding on March 2, 2004. In accordance with the Rules, paragraph 5(a), the due date for a Response was scheduled as March 22, 2004. The Response was filed with the Center by e-mail on March 23, 2004. A hardcopy of the Response was received by the Center on April 1, 2004. Although Respondent's submission was received one day after the deadline of March 22, 2004, on March 23, 2004, the Panel finds that, when subtracting the eight hours time difference (Pacific Time) from the time of receipt, 05:13 a.m. (Swiss Time), Respondent has met the deadline in its time zone. The Panel finds this to be sufficient.
Two supplemental filings, one by each party, were received by the Center by e-mail on March 25, 2004. According to paragraph 10 of the Rules, the Panel has sole discretion as to whether it wishes to consider any supplemental filings by the Parties. The Panel finds that, in this case, the Parties had equal opportunities to state their case in their supplemental submissions and therefore decides to consider them, as far as they are relevant to the case. Any further submissions by the Parties, however, are not admitted.
On March 25, 2004, the Center transmitted by e-mail to the Parties a Notification of Appointment of the Panel. The Center transferred the case file to the Sole Panelist on the same day, and a hardcopy of the Response on April 1, 2004. The Panel finds that it was properly appointed and constituted in accordance with the Policy, the Rules, and the Supplemental Rules.
Respondent stated in its Response and its supplemental filing that it had not received a hardcopy version of the Complaint, i.e., had not been able to look into the annexes of the Complaint. Finding that the failure of delivery was attributable neither to the Center nor to Respondent, the Panel still ordered a renewed delivery to Respondent. With its Procedural Order No. 1 of March 30, 2004, the Panel set a deadline to Respondent to provide the Center with a "correct" postal address in accordance with Canadian postal law to which the Center shall send a full copy of the Complaint. The new projected decision date was set to April 23, 2004. The Center, however, has not received word from Respondent since then. The Center's e-mail transmission record suggests that Respondent's e-mail address, which had been used for all correspondence by Respondent to the Center and to Complainant and which it had provided in its Response, may not be active any more. The Panel finds that - if so - such negligence solely lies in Respondent's sphere of responsibility. The Center has more than complied with the principle of equal treatment of the Parties by offering a second delivery of the hardcopy file to Respondent. The Panel will therefore take Respondent's first submission - be it as it is - as final Response.
4. Factual Background
The following facts appear from the Complaint, the Response, including their annexes, and the additional filings submitted by the Parties.
Complainant, incorporated under the laws of Germany, is Europe's largest telecommunications operator. Complainant's presence includes more than 65 countries around the globe. With more than two million shareholders, Complainant has more shareholders than any other German company and more shareholders outside its home country than any other company in the world.
Complainant operates four strategic divisions, T-Mobile, T-Online, T-Systems, and T-Com, the latter being responsible for fixed-line services. T-Com has, among others, four million customers using its DSL broadband Internet connections in Germany, marketed under the trademark "T-DSL". Complainant has registered a large number of national and international trademarks reflecting the term "T-DSL" (German trademarks DE 398 30 023 and DE 302 28 139; EU Community trademark No. 00949073; international trademark No. 702 995).
Complainant has registered and uses, inter alia, the following domain names to market its products and services on the Internet: <t-dsl.com>, <t-dsl.biz>, <t-dsl.de>, and <tdsl.de>.
None of the filings either of Complainant or Respondent provide the Panel with any certain information on Respondent's area of business, research, or any other activity. Respondent seems to offer telecommunications equipment and services and does research in that respect as well.
5. The Parties' Contentions
Complainant contends that:
- The Domain Name is identical to trademarks and service marks in which it has rights; and
- 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, Complainant requests the Domain Name to be transferred to Complainant.
Additional respective contentions of Complainant are included in the following discussions and findings.
Respondent contends that:
- The Domain Name is not identical or confusingly similar to Complainant's trademarks or service marks; and
- Respondent has a legitimate interest in respect of the Domain Name; and
- The Domain Name was not registered and is not used in bad faith.
In addition, Respondent alleges that Complainant's action amounts to an act of reverse domain name hijacking.
Additional respective contentions of Respondent are included in the following discussions and findings.
6. Discussions and Findings
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
"(i) That the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That 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 is <t-dsl.net>. As set forth above, and not challenged by Respondent, Complainant owns various national and international trademarks in the denomination "T-DSL".
As to Respondent's doubts concerning the legal validity of Complainant's marks, i.e. that "t-dsl" is a generic product description used by various other telecommunications companies as well, these objections cannot be considered by the Panel which is lacking jurisdiction in this respect. For such actions, the Panel must refer Respondent to the competent (national) authorities.
With respect to Respondent's contentions regarding the generic top level domain ".net", UDRP case law has well established that generic top level domains are disregarded when determining the identity or confusing similarity under Paragraph 4(a)(i) of the Policy (see, e.g., Ruby's Diner, Inc. v. Joseph W. Popow, WIPO Case No. D2001-0868). For the rest, it is obvious that the Domain Name is identical to Complainant's trademarks and service marks.
The Panel thus finds that Complainant has met the burden of proof as provided by Paragraph 4(a)(i) of the Policy.
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 (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you acquired no trademark or service mark rights; or
(iii) You 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 trademark or service mark at issue."
Complainant asserts, and Respondent does not contend, that Respondent is neither a representative, a licensee of Complainant, or otherwise authorized to use Complainant's trademarks and service marks.
Respondent has offered domain name registration services under the Domain Name. Only in February of 2004, did it change the website under the Domain Name, now displaying the Terrabit logo with no further commercial or other activities visible. Such conduct by the holder of a Domain Name, using someone else's famous denomination to market its services, may under no circumstances lead to any rights or legitimate interests in a domain name. Specifically, Respondent had not been known under the Domain Name nor had it used the website under the Domain Name in connection with a bona fide offering of goods or services.
Although Respondent contends that there is evidence of Respondent's legitimate use of the Domain Name and a name corresponding to the Domain Name, such evidence was not provided to the Panel.
Thus, the Panel holds that Respondent has no rights or legitimate interests in the Domain Name, and Complainant has fulfilled its burden of proof as provided under Paragraph 4(a)(ii) of the Policy.
The third element to be proven by Complainant is the registration and bad faith use of the Domain Name by Respondent. 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 have acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark, or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Domain Name; or
(ii) You 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 have registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the Domain Name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with 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."
Complainant contends that at the time of registration, February 6, 2000, Respondent, as the obvious beneficial holder through Microscience Corporation at that time (the original registrant), must have been aware of Complainant's trademarks and service marks that, at the time, had already been registered and were in use. The Domain Name had been registered by the then German subsidiary of Microscience Corporation which, with regard to the overwhelming market share of "T-DSL" and the above-mentioned websites of Complainant, could not have not known of Complainant's famous denomination under which it marketed its broadband Internet services. Knowledge of Complainant's trademarks is further demonstrated by Microscience Corporation's correspondence on behalf of Respondent to Complainant on October 27, 2003, threatening to file an opposition to Complainant's pending Canadian "T-DSL" trademark applications.
These above facts have not changed since the Domain Name was renewed under the name of Respondent.
Respondent had previously operated the website under the Domain Name to offer the registration of Internet domain names. It is therefore fairly obvious that Respondent had registered the Domain Name intending to commercially benefit from Complainant's well-known reputation and trademarks, as reflected in the Domain Name. The Panel cannot make up any connection between the denomination "T-DSL" and a domain name registration service.
Moreover, to the Panel's knowledge and not contested by Respondent, there has not been any actual active use of the Domain Name on the Internet since the renewed registration on February 12, 2004. Such passive holding or inactivity, under UDRP case law, in itself allows a ruling of bad faith under Paragraph 4(b) of the Policy (see, e.g., Atlantic Recording Corporation v. Paelle International, WIPO Case No. D2001-0065).
As far as Respondent's allegation of reverse domain name hijacking is concerned, Complainant has described in detail why it had not previously interceded Respondent's holding of the Domain Name and why it had tried to settle the issue with Respondent on a mutual basis. The Panel has not found any indication in the file or in any statements of Complainant that would suggest any attempt of reverse domain name hijacking.
Complainant has hence proven beyond any reasonable doubt that the Domain Name was registered and is being used in bad faith by Respondent.
For all the foregoing reasons and facts discussed, the Panel holds that the Domain Name is identical to the registered trademarks and service marks in which Complainant has rights, that 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 that the Domain Name <t-dsl.net> be transferred to Complainant.
Bernhard F. Meyer-Hauser
Dated: April 22, 2004