WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Deutsche Telekom AG v. Dong Wang
Case No. D2005-0819
1. The Parties
The Complainant is Deutsche Telekom AG, Bonn, Germany, represented by Lovells, Munich, Germany.
The Respondent is Dong Wang, Beijing, China.
2. The Domain Name and Registrar
The disputed domain name <tmobille.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 August 1, 2005. On August 1, 2005, 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 August 1, 2005, 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 and providing the contact details. 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 August 10, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 30, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 15, 2005.
The Center appointed Petter Rindforth as the sole panelist in this matter on September 21, 2005. 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.
The Panel shall issue its Decision based on the Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. The case before the Panel was conducted in the English language.
4. Factual Background
The Complainant is Europe’s largest telecommunications company, covering the entire spectrum of modern telecommunications. The Complainant is continuously encouraging the internationalization of the Deutsche Telekom Group with a variety of strategic shareholdings. Over the past two years the Complainant has completed or initiated transactions amounting to US66 billion dollars. The Complainant has established presence in the major economic centers of the world, and is represented in about 50 countries worldwide (Annex C of the Complaint).
The Complainant’s subsidiary T-Mobile International is one of the largest GSM mobile communications providers in the world. “T-Mobile” is the corporate name under which the Complainant’s business in the mobile communications sector is conducted.
The Complainant has registered a number of domain names consisting of “t-mobile” or variations thereof. A list of these domain name registrations was provided as Annex F to the Complaint.
The Complainant owns, inter alia, the Community Trademark No 000485441 T-MOBILE and the International Trademark No IR680034 T-MOBILE and No IR680035 T-MOBILE (figurative). The scope of protection for these International Registrations includes China, the country of the Respondent. A printout of the corresponding database entries was provided as Annex E of the Complaint.
The disputed Domain Name was registered on November 30, 2002, (Annexes A and H of the Complaint). In May 2005, the Complainant learned that a Mr. Yong Li had registered the Domain Name and sent a cease and desist letter, asking Mr. Yong to transfer <tmobille.com> to the Complainant. Instead, the disputed Domain Name was transferred to the Respondent.
No specific information was provided about the Respondent’s business activities.
5. Parties’ Contentions
Complainant states that the Domain Name was originally registered by Mr. Yong Li and transferred to Respondent “most probably” on July 7, 2005 - after receipt of Complainant’s cease and desist letter. The Complainant concludes that Mr. Yong and the Respondent are the same person, as the e-mail addresses of the administrative contacts refer to the same person (“Yong”) and the website connected to the Domain Name was identical before and after the transfer (Annex G of the Complaint).
Mr. Yong is a well-known cybersquatter, and has been the respondent in at least two previous UDRP cases.
The Complainant further states that the Domain Name is confusingly similar to the trademark T-MOBILE. Complainant has only created a simple and deliberate misspelling by adding a further letter “l” to the domain name.
Complainant declares that the Respondent is not, and never has been, a representative or licensee of the Complainant, nor is the Respondent otherwise authorized to use the Complainant’s marks, nor is he known by the Domain Name.
The Complainant argues that the disputed Domain Name was registered and is being used in bad faith. When registering the Domain Name, the Respondent had knowledge of the Complainant’s trademarks and business names. This is evident given the worldwide reputation of the Complainant’s trademarks. The Respondent registered the Domain Name with the intent to use the reputation of the famous trademark and business name T-MOBILE.
The disputed Domain Name is active and points towards a portal website which simply lists various sponsored links. It is now a well-known practice to display on a web page or search engine various links to other commercial websites: every link activated by an Internet user enables the owner of this page to collect a financial remuneration proportional to the number of hits.
Previous panels have held that it was an evidence of bad faith if “the Respondent is using the disputed domain name to direct visitors to a search engine that provides sponsored links”, Lowen Corporation d/b/a Lowen Sign Company v. Henry Chan (WIPO Case No. D2004-0430).
The Complainant requests, in accordance with paragraph 4(i) of the Policy, that the Panel issue a decision that the Domain Name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the Respondent’s Domain Name 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 Complainant is the owner of several trademark registrations for T-MOBILE, in particular, the International Registration No IR680034 T-MOBILE, covering China (among other countries).
The relevant part of the Domain Name is “tmobille”.
As stated by the Complainant, with references to previous UDRP decisions such as Chernow Communications, Inc v. Jonathan D. Kimball, WIPO Case No. D2000-0119 and Fuji Fotofilm USA, Inc. v. LaPorte Holdings, WIPO Case No. D2004-0971, the absence of hyphens or a deliberate misspelling does not alter the fact that a domain name is identical or confusingly similar to a mark.
T-MOBILE is a famous trademark and the absence of the hyphen and the addition of the extra letter “l” is not enough to change the impression of <tmobille.com> being confusingly similar to Complainant’s trademark.
The Panel therefore concludes that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Respondent is not an authorized agent or licensee of the Complainant’s products or services and has no other permission to apply for any domain name incorporating the trademark T-MOBILE or anything deliberately confusingly similar thereto.
By not submitting a response, the Respondent has failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Name.
Respondent’s use of the Domain Name for a commercial website with links to competitors of the Complainant cannot constitute a bona fide use of the Domain Name pursuant to paragraph 4(c)(i) of the Policy (See TM Acquisition Corp. v. Gary Lam, NAF FA280499, holding Respondent’s use of the disputed domain name for a commercial web directory website linking users to competing services did not constitute a bona fide use or fair use pursuant to the UDRP; see also Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809, “Bona fide use does not exist when the intended use is a deliberate infringement of another’s rights.”).
The Panel therefore concludes that the Respondent has no legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
As concluded above, the Complainant’s trademark T-MOBILE is famous and well known throughout the world. The original registrant, Mr. Yong Li, was most likely well aware of this fact when he registered the disputed Domain Name.
As pointed out by the Complainant, Mr. Yong seems to have a history of registering others trademarks as domain names, either by using typographical errors, ATA Airlines, Inc. v. Yong Li, WIPO Case No. D2003-0403, or additions of generic words, Alamo Rent-A-Car Management, LP v. Yong Li, WIPO Case No. D2003-0535.
The Domain Name is used for an active website with presumably sponsored links to various mobile phone service providers and web shops. As was shown by Annex G of the Complaint, the use of the Domain Name has not changed since it was transferred from Mr. Yong to the Respondent. The Panel concludes that the Respondent has used the Domain Name with the intention to attract Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the said website.
However, the Domain Name was transferred from Mr. Yong to the Respondent, after receipt of Complainant’s cease and desist letter, but shortly before the Complaint was filed. Paragraph 8(a) of the Policy deals with what is commonly known as “cyberflight”: The Respondent may not transfer the domain name registration to another holder during a pending administrative proceeding. In this case, the transfer took place before any administrative proceeding had commenced.
A transfer of a domain name to a third party does amount to a new registration for the purposes of determining bad faith. Registration in bad faith must occur at the time the current Registrant took possession of the domain name, which presumably in this case is July 7, 2005 (Annex A of the Complaint).
The Complainant suggests that the original registrant and the Respondent are the same person, referring to the website before and after the transfer and to the fact that the e-mail addresses of the administrative contacts refer to the same person. The Panel also notes that the postal code of Mr. Yong and the Respondent are identical.
Paragraph 14(b) of the Rules permits the Panel to draw such inferences as it considers appropriate from a party’s failure to comply with a provision of, or requirement under the Rules. It could be inferred from the Respondent’s failure to file a Response in this case that the Respondent does not dispute the allegations in the Complaint of Mr. Yong and the Respondent being the same person.
The Panel, therefore, concludes that the Respondent is an alias or alter ego of the original registrant, and as the Domain Name clearly was originally registered in bad faith, the transfer – creating a new registration – is still to be considered as a bad faith registration.
Thus, this Panel concludes that the Domain Name is both registered and used in bad faith, and that the Complainant has succeeded in proving the three elements within paragraph 4(a) of the Policy.
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, <tmobille.com> be transferred to the Complainant.
P-E H Petter Rindforth
Dated: October 5, 2005