WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Deutsche Telekom AG v. AdImagination
Case No. DWS2006-0001
1. The Parties
The Complainant is Deutsche Telekom AG, Bonn, Germany, of Germany, represented by Lovells, Germany.
The Respondent is AdImagination, Stanton, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <tmobilesucks.ws> is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2006. On November 13, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On November 13, 2006, Go Daddy Software 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 November 23, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 13, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 14, 2006.
The Center appointed Nasser A. Khasawneh as the sole panelist in this matter on December 21, 2006. 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 a leading telecommunications company which provides GSM mobile communication services in various countries under the trademark T-MOBILE.
The Complainant has various trademark registrations of the trademark T-MOBILE. Trademark registrations in the United States date back to 1997.
The Complainant has also registered domain names that include its trademark. The Panel verified the registration of the domain names <t-mobile.com>, <tmobile.com> and found that they were registered since 2000.
The Respondent has registered the disputed domain name on December 22, 2005.
5. Parties’ Contentions
The Complainant contends that:
- The Complainant is Europe’s largest telecommunications company with a track record of innovation in its field. The Complainant is expanding internationally and has a wide presence in many countries of the world and an international shareholding.
- The Complainant operates a subsidiary that is a leading GSM communications provider and operates under the trade name/corporate name T-Mobile.
- The Complainant has trademark registrations of the term “T-Mobile” in classes 9, 14, 16, 18, 25, 28, 36, 37, 38, 41, 42. Registrations of its trademark have been made in the United States of America since 1997. Trademark registrations have also been made in the European Union and as an international trademark.
- The Complainant and its subsidiary T-Mobile USA have various domain name registrations that include the term T-mobile such as <t-mobile.com>, <tmobile.com>, <t-mobile.net>, <tmobile.net>, etc.
- The Respondent has no rights or legitimate interests in the disputed domain name because it was never authorized by the Complainant to use the trademark T-MOBILE nor is it using the disputed domain name with a bona fide offering of goods or services or making a legitimate non-commercial or fair use of the disputed domain name. The Respondent was never known under the name “T-mobile”. Adding the word “sucks” does not render the use legitimate since free speech does not necessarily require the use of the concerned trademark. Most importantly, the Respondent has not used the disputed domain name to create a criticism web-site but has so far only offered the domain name for sale.
- The bad faith of the Respondent is demonstrated by the fact that it offered the disputed domain name for sale and has not created a web-site to be used for customer service issues as it had claimed. The Respondent operates another web-site through which it sells certain products and has made substantial sales, which indicates its familiarity with conducting commerce on the Internet. It is unlikely that the Respondent did not know about the trademark T-MOBILE since the trademark has an established reputation and goodwill. Previous knowledge of the existence of the trademark is a sign of bad faith. Holding the domain name in a passive manner without making any use thereof is also a sign of bad faith.
- The disputed domain name is confusingly similar to the trademark of the Complainant because it incorporates the trademark itself and adds the word “sucks” which does not help in rendering the domain name distinctive and does not remove the confusing similarity with the trademark. The lack of a hyphen does not change the situation either.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant is the owner of the trademark T-MOBILE as established from the various trademark registrations, and the documented use of the trademark as the corporate name of a subsidiary of the Complainant for providing GSM-related services. The Panel has reviewed the material submitted by the Complainant which show the various trademark registrations, visited the Complainant’s subsidiary’s (T-mobile USA) web-site and verified the registration of various domain names by the Complainant. The Panel is convinced that the trademark T-MOBILE is owned by the Complainant.
The only substantial difference between the Complainant’s trademark T-MOBILE and the disputed domain name is the addition of the word “sucks” after the word “tmobile”. It is therefore important to consider whether the addition of such a term is sufficient to dissociate the disputed domain name from the Complainant’s trademark. The Panel has reviewed various WIPO cases in this matter and is aware that there are two different views thereon. The established majority view is that a domain name consisting of a trademark and a negative term is confusingly similar to the Complainant’s mark. The minority view is that a domain name consisting of a trademark and a negative term is not confusingly similar because internet users are not likely to associate the trademark with a domain name consisting of the trademark and a negative term (paragraph 1.3, WIPO Overview of WIPO Panel Views on Selected UDRP Questions). Certain decisions in applying the minority view have considered adding the word “sucks” sufficient to indicate that a site is used for criticism, while others have applied the majority view. The Panel refers to one WIPO Case in which the Panel reasoned that “not all internet users are English speakers or familiar with the use of “sucks” to indicate a site used for denigration or criticisms” (See The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NetWest Bank v. Personal and Pedro Lopez, WIPO Case No. D2003-0166). The Panel agrees with the aforementioned decision and others which have concluded that confusing similarity exists in such instances. In another case, the Panel had reached a conclusion that the internet user might think the owner of the trademark has itself created a web-site to receive complaints from customers and added the word “sucks” to highlight the purpose of the web-site (See Koninkljike Philips Electronics N.V. v. In Seo Kim, WIPO Case No. D2001-1195).
The Panel believes that the majority view is correct, noting that even when an Internet user is familiar with in all likelihood the meaning of the word “sucks”, it will still be confused as to the association of the domain name with the Complainant, at least initially. In this regard, the Panel notes with approval the reasoning adopted in this regard in Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000-0477. In this latter case, the panel reasoned as follows, and this reasoning applies to the case at hand:
“Internet users with search engine results listing Respondent’s domains are likely to be puzzled or surprised by the coupling of Complainant’s mark with the pejorative verb “sucks”. Such users, including potential customers of Complainant, are not likely to conclude that Complainant is the sponsor of the identified websites. However, it is likely (given the relative ease by which websites can be entered) that such users will choose to visit the sites, if only to satisfy their curiosity. Respondent will have accomplished his objective of diverting potential customers of Complainant to his websites by the use of domain names that are similar to Complainant’s trademark.”
The addition of the suffix “.ws” does not create any distinctiveness that helps eliminate the possibility of confusion. In similar cases, the addition of the suffix “.com” was considered not to add any element of distinctiveness (see Nokia Corporation v. Firdaus Adinegoro/Beli Hosting, WIPO Case No. D2004-0814).
Consequently, the Panel finds that the Complainant has met the requirements of the first test under the Policy.
B. Rights or Legitimate Interests
The Respondent is not linked to the Complainant or its business in any manner nor does it act on its behalf. The Complainant contends that it had not given any authorization to the Respondent to use the trademark T-MOBILE as part of the disputed domain name.
The Respondent can demonstrate its rights or legitimate interest in the disputed domain name in accordance with paragraph 4(c) of the Policy. In this paragraph, the following are listed as circumstances that, in particular but without limitation, would demonstrate a respondent’s legitimate interest or right in a disputed domain name:
(i) that the Respondent used or presented demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services;
(ii) that the Respondent has been commonly known by the domain name;
(iii) that the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark of the Complainant.
In the present case the Respondent has not submitted any evidence that establishes its rights or legitimate interests based on any of the above scenarios. While failure to respond does not present conclusive evidence against the Respondent, the Panel did consider this factor as further proof of the Respondent’s failure to demonstrate its rights or legitimate interests in the disputed domain name (See Nokia Corporation v. Firdaus Adinegoro/Beli Hosting, WIPO Case No. D2004-0814).
The Panel considered each of the elements of Paragraph 4(c) in turn. The Panel found that there is no evidence offering of any goods or services by the Respondent in this case. The disputed domain name is being held in a passive manner and the only active step taken by the Respondent in relation to use of the domain name appears to be to offer it for sale. As outlined in more detail under section C below, the Panel conducted an Internet search which indicated that the site of the disputed domain name is indeed being offered for sale on e-Bay, and the Respondent seems to have responded to an angry T-Mobile Customer on a customer blog and encouraged the customer in question to buy the disputed domain name. The Respondent has not submitted any proof demonstrating an intent or preparation to use the domain name in connection with a bona fide offering of goods and services.
The Panel does not find any apparent association between the Respondent’s name and the disputed domain name. The Panel also finds no indication that the Respondent is using the disputed domain name for “legitimate non-commercial or fair use” purposes. In fact, as noted it would appear the Respondent tried to obtain commercial gain from selling the domain name to the Complainant or to a third party on e-Bay.
The Panel does not consider it likely in the circumstances that the disputed domain name was registered with the view of offering a forum for criticism since the Respondent has left it inactive. There is no evidence before the Panel indication that this domain name is being used for the purpose of exercising freedom of speech. As indicated by the record available to the Panel and the searches it has conducted on the Internet, the only apparent use being made of the domain name is to offer it for sale.
The Panel is aware that there are two different views evolving in UDRP Decisions regarding the use of a trademark in the domain name of a site when it is genuinely used as free-speech and non-commercial site. On the one side, some Panelists have maintained that the operation of a web-site for the purposes of criticism can give rise to a legitimate interest within the meaning of the Policy (See Britannia Building Society v. Britanna Fraud Prevention, WIPO Case No. D2001-0505, and Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014). On the other side, some Panelists have concluded that the right to free speech does not translate into a right to register a trademark that is identical or confusingly similar to owner’s trademark or conveys a strong association therewith.
However, the case in hand is very different since the Respondent did not establish a web-site for the purposes of criticism. In fact, the only action taken by Respondent was to offer the domain name for sale. Consequently, this Panel need not adopt a view regarding the use of confusingly similar trademarks in domain names used for the purposes of non-commercial free speech. The Respondent in this case appears to be engaged in a straightforward act of cyber-squatting of the type which the Policy was designed to combat. The fact that the Respondent added the word “sucks” to Complainant’s trademark does not in the circumstances add any legitimacy to the Respondent’s action. Given that the Respondent had not used the disputed domain name for criticism of the Complainant but has apparently only used it as a potential way to seek monetary gain from the Complainant’s mark, it follows that there can be no right or legitimate interest found for the Respondent in the domain name in this case. If anything, under the circumstances of this case, the addition of the word “sucks” only adds an air of cynical opportunism to the Respondent’s obvious cyber-squatting intentions.
The Panel agrees with the view expressed in a similar case whereby the Panel stated that “the record of this proceeding evidences that Respondent did not register ‘walmartcanadasucks.com’ and his other ‘-sucks’ names in order to express opinions or to seek the expression of opinion of others. The record indicates that his intention was to extract money from Complainant”. (See Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico WIPO Case No. D2000-0477).
Similarly in the present case, there is no evidence of a right or legitimate interest being held by the Respondent in the disputed domain name.
Based on all of the above factors, the Panel finds no rights or legitimate interest of the Respondent in the disputed domain name.
C. Registered and Used in Bad Faith
A clear demonstration of bad faith lies in the fact that the trademarks of the Complainant were registered long before the registration of the disputed domain name. The domain name of the Complainant were also registered prior to the registration of the disputed domain name.
Paragraph 4(b) of the Policy sets out a number of circumstances, each of which shall provide evidence of registration and use in bad faith. Paragraph 4(b)(i) sets out the following such element: “(i) circumstances indicating that you have registered or you 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name”. The Panel is convinced that the Respondent meets this test as it has offered the domain name for sale and has not made any other use thereof since its registration.
The Panel did consider previous WIPO Decisions in which bad faith was not found even though the Respondent had offered the domain name for sale to the Complainant. In one such case, the Panel concluded that “it does not appear that the sale of the domain name was the Respondent’s primary purpose in registering or using the domain name. On the contrary, the Respondent’s primary purpose from the time of registration of the domain name to date appears to be the exercise of his free speech right to criticize the Complainants”. (See Bridgestone Firestone, Inc. Bridgestone/FirestoneResearch, Inc. and Bridgestone Corporation v. Jack Myers WIPO Case No. D2000-0190).
However, the conditions for excluding bad faith as explained in the aforementioned decision are not present in this case. The Respondent has not created a web-site for free speech or for the purposes of criticizing the Complainant. There is no indication that the Respondent’s primary goal was to provide a forum. However there is clear evidence that the disputed domain name which incorporates the Complainant’s mark, has been offered for sale. The Panel considers it more likely that not in the circumstances that the disputed domain name was registered for the purpose of sale or with a view to otherwise profiting from association and possible confusion with the Complainant’s mark. There is no evidence that the domain name has been used actively other than in an offer for sale. Therefore, the Panel is convinced of the probable bad faith of the Respondent.
The Panel believes the above factor are sufficient for meeting the third requirement of the Policy in this case. However, the Panel also considered the Respondent’s probable knowledge of the Complainant’s trademark as a further sign of bad faith. The probability of the Respondent not being familiar with the trademark of the Complainant is very low since the Respondent added the word “sucks”, which is a pejorative description, and one generally only tries to describe an item when one is familiar with such item. This is further confirmed by the fact that when offering the domain name for sale on e-Bay, the Respondent has apparently declared that such domain name can be ideal for a forum, blog, customer service issues related to T-Mobile. The Panel checked the e-Bay page and found the following statement thereon: “Need to set up a TMobile Forum, Blog, Customer Service Issues internet site? We have the perfect TMobile internet domain name for sale …. Grab it while available. TMobile’s LEGAL DEPARTMENT has locked up every internet domain name suffix for ‘tmobilesucks’…. Well, almost every internet site as WE OWN www.tmobilesucks.ws.”
Accordingly, it is in the Panel’s view more than likely that the Respondent actually knew of the trademark of the Complainant and the products/services in connection with which the trademark is used at the time the domain name was registered. As it was noted in the Herbalife International Inc v. Surinder S. Farmaha, WIPO Case No. D2005-0765 “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”.
Based on the foregoing the Panel finds that the Respondent knew very well what T-Mobile is and was consciously trying to benefit from its reputation in setting up the disputed domain name for sale.
In conclusion, the Panel finds that the third test under paragraph 4(a) has been established successfully by the Complainant, and that the domain name was registered and is being used in bad faith.
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, <tmobilesucks.ws> be transferred to the Complainant.
Nasser A. Khasawneh
Dated: January 4, 2007