WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Deutsche Telekom AG v. Philip Seldon/RegTek Whois Envoy
Case No. D2007-0674
1. The Parties
The Complainant is Deutsche Telekom AG, Bonn, Germany, represented by Lovells, Germany.
The Respondent is Philip Seldon/RegTek Whois Envoy, New York, United States of America.
2. The Domain Names and Registrar
The disputed domain names, <t-mobilecomplaintcenter.com>, <tmobilecomplaintcenter.com>, <t-mobilecomplaintcenter.info>, <tmobilecomplaintcenter.info>, <t-mobilecomplaintcenter.net>, <tmobilecomplaintcenter.net>, <t-mobileinfocenter.com>, <tmobileinfocenter.com>, <t-mobileinfocenter.info>, <tmobileinfocenter.info>, <t-mobileinfocenter.net>, <tmobileinfocenter.net>,< t-mobileinformationcenter.com>, <tmobileinformationcenter.com>, <t-mobileinformationcenter.info>, <tmobileinformationcenter.info>, <t-mobileinformationcenter.net> and <tmobileinformationcenter.net> are registered with Registration Technologies.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2007. The Complaint as initially filed identified RegTek Whois Envoy as the Respondent. On May 9, 2007, the Center transmitted by email to Registration Technologies a request for registrar verification in connection with the domain names at issue. On May 11, 2007, Registration Technologies transmitted by email to the Center its verification response stating inter alia that RegTek Whois Envoy is a privacy service, that the registrant listed is Philip Seldon and providing contact details for Philip Seldon.
In response to a notification by the Center convening the registrant information and contact details provided by registrar, the Complainant filed an amendment to the Complaint on May 18, 2007 with respect to the identity of the Respondent, by adding as a respondent the newly identified Philip Seldon and, with respect to any challenges that may be made by the Respondent to a decision by an administrative Panel to transfer or cancel the disputed domain names, by submitting to the jurisdiction of the courts at the location of Philip Seldon. In this case, RegTek Whois Envoy appears to have been correctly identified in the Complaint as the registrant based on the Whois record at the time that the Complaint was filed. As was recently noted in Peek & Cloppenburg KG v. Whois Privacy Protection Service, Inc./Demand Domains, WIPO Case No. D2007-0019: “Panels confronted by identity shields have been prepared to treat both the initially identified registrant and the subsequently disclosed registrant together as Respondent. See, e.g., TDS Telecommunications Corporation v. Registrant  Nevis Domains and Registrant  Moniker Privacy Services, WIPO Case No. D2006-1620. For the purpose of the current proceeding and on the basis of WIPO UDRP precedent, the Panel accepts that both Whois Privacy Protection Service, Inc and Demand Domains should be named as respondents. For ease of reference, the Panel will refer to a single Respondent here.”
For the purpose of the current proceeding and on the basis of the above WIPO UDRP precedents the Panel accepts that Philip Seldon and RegTek Whois Envoy should be named as Respondents. For ease of reference the Panel will refer to a single Respondent described as Philip Seldon/RegTek Whois Envoy.
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 May 21, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was June 10, 2007. The Response was filed with the Center on June 10, 2007.
The Center appointed The Honourable Neil Anthony Brown QC as the sole panelist in this matter on June 15, 2007. 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 large German telecommunications company that operates in more than 50 countries and has about 250,000 employees. Its subsidiary T-Mobile International AG & Co. KG is a large mobile telecommunications provider with 106 million customers in Europe and the United States; it uses the name ‘T-Mobile’ to conduct its mobile telecommunications business. It operates its own website at “www.t-mobile.com”, on which it gives details of telephones, plans available to subscribers, services and accessories, the coverage of its service and various support facilities.
The Complainant has registered a large number of national, European Community and international trademarks incorporating the term T-MOBILE, including the trademark registered number 2282432, which was registered with the United States Patent and Trademark Office on February 27, 1997 for T-MOBILE.
The Respondent is domiciled in the State of New York, United States of America and registered the disputed domain names on July 12, 2006.
5. Parties’ Contentions
The Complainant alleges that the domain names <t-mobilecomplaintcenter.com>, <tmobilecomplaintcenter.com><t-mobilecomplaintcenter.info>, <tmobilecomplaintcenter.info>, <t-mobilecomplaintcenter.net>, <tmobilecomplaintcenter.net>,< t-mobileinfocenter.com>, <tmobileinfocenter.com>, <t-mobileinfocenter.info>, <tmobileinfocenter.info>, <t-mobileinfocenter.net>, <tmobileinfocenter.net>, <t-mobileinformationcenter.com>, <tmobileinformationcenter.com>, <t-mobileinformationcenter.info>, <tmobileinformationcenter.info>,< t-mobileinformationcenter.net> and <tmobileinformationcenter.net> should no longer be registered with the Respondent but that they should be transferred to the Complainant.
It contends that this should be done because, within the meaning of paragraph 4 of the Policy, the domain names are confusingly similar to the Complainant’s registered trademark T-MOBILE, that the Respondent has no rights or legitimate interests in the domain names and that they been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain names to the Complainant.
In support of its case on the first of these three elements, the Complainant relies on the registered United States T-MOBILE trademark and the other T-MOBILE marks to which reference has already been made (“ the T-MOBILE mark”) and says that the domain names are confusingly similar to the trademark because they incorporate the entirety of the trademark and merely add the generic or common expressions ‘infocenter’, ‘informationcenter’ and ‘complaint center’. The confusion comes, it contends, from the fact that internet users seeing the domain names will believe that they are official T-Mobile domain names referring to the Complainant’s subsidiary, its mobile telephone service which is known as T-mobile and information and complaint resolution services provided by T-Mobile and that the domain names are therefore associated with T-Mobile itself.
The Complainant then contends, to establish the second element, that the Respondent has no rights or legitimate interests in the domain names because it has not been authorized to use the Complainant’s mark and it cannot bring itself within any of the provisions of paragraph 4(c) of the Policy or otherwise establish a right or legitimate interest in the domain names.
Finally, the Complainant contends that the domain names were registered and are being used in bad faith. It contends that this is so because, although the Respondent has been passively holding the domain names, it must have had knowledge of the trademark when it registered the domain names. Moreover, the trademark is famous and has a strong reputation and the Respondent could only have registered the domain names to attract the public by misleading them into thinking that they could obtain access to information and complaint resolution services on the Complainant by using the domain names, which is not so. The Complainant also contends that it is clear from the large number of disputed domain names that the Respondent has registered, that he is a ‘domain-grabber’ and that his intention must have been to cause confusion between the services offered by the domain names and the services of the Complainant.
The Respondent contends, first, that the disputed domain names are not confusingly similar to the T-MOBILE mark. The domain names, incorporating as they do, references to complaints and complaint centers, could not be referring to the Complainant because it would hardly have a website devoted to complaints about itself. Likewise, the domain names incorporating references to information and information sites “are not identical to the T-mobile sites and would not cause any confusion”.
The Respondent then contends that he has rights or legitimate interests in the domain names, which arise from the following circumstances. First, that the facts bring the case within paragraph 4(c)(i) of the Policy, for they show that before notice of the dispute, he used the domain names in connection with a bona fide offering of goods and services, namely offering to the public a service of providing via the Free Speech Center, a forum for the dissemination of complaints and information about T-Mobile. Secondly, the Respondent claims that by so forwarding messages to the Free Speech Centre he was, within the meaning of paragraph 4(c)(iii) of the Policy, making a legitimate noncommercial or fair use of the domain names.
As to the allegations of bad faith, the Respondent denies each of the criteria of bad faith set out in paragraph 4(b) of the Policy. In particular, he says that there is no advertising of any kind or reference or recommendation to use the services of the Complainant’s competitors. He also says that he does not use the domain names to sell advertising and does not charge for the services provided.
C. Supplemental Filing by the Complainant
The Panel has decided in the exercise of its discretion to have regard to a supplementary filing lodged by the Complainant, as it was made in reply to information provided by the registrar of the domain names concerning the identity of the Respondent and matters raised by the Respondent in his Response and of which the Complainant could not have previously been aware. The Complainant confined itself to replying to those new matters and it is necessary for the Panel to have regard to them.
The Complainant contends in the supplementary filing that the Panel should reject the argument that the Respondent has a right or legitimate interest in the domain names because they are linked to the Free Speech Forum. That is so, the Complainant contends, because the domain names were registered on July 12, 2006, and it was not until after the Complainant was lodged on May 7, 2007 that the Respondent established that link. Even now, there have been no threads or postings at the Forum that relate to the Complainant. From these facts the Complainant invites the Panel to conclude that the Respondent did not register or use the domain names for the purpose of promoting free speech but to frustrate the Complainant’s efforts to obtain their transfer and to create the false illusion of a right or legitimate interest.
6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The Panel therefore turns to discuss the various issues that arise for decision on the facts as they are known.
For the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:
A. The domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
B. The Respondent has no rights or legitimate interests in respect of the domain names; and
C. The domain names have been registered and are being used in bad faith.
It is to be noted that paragraph 4 of the Policy provides that the Complainant must prove that each of the three elements is present. The Panel will therefore deal with each of these requirements in turn.
A. Identical or Confusingly Similar
The Panel finds that each of the domain names is confusingly similar to the Complainant’s United States trademark T-MOBILE referred to above. That is so for the following reasons. First, the domain names incorporate the entirety of the trademark and are clearly designed to invoke the T-MOBILE mark, the business named T-Mobile and the services provided by it. The ordinary observer, presented with the domain names and the trademark, would thus be highly likely to draw the conclusion that the T-Mobile referred to in the domain names is the same as that referred to in the trademark.
Secondly, in devising the domain names the Respondent has taken the entirety of the T-MOBILE mark and merely added to it a generic and common expression, either “complaintcenter”, “infocenter” or “informationcenter” as the case may be. It has been held in many UDRP proceedings that doing so does not diminish the otherwise confusing similarity between a domain name and a trademark, for Internet users will simply assume that the generic or common expression relates to the Complainant and not to anyone else. Thus, in the present case, internet users would more probably than not assume that the “complaintcenter”, “infocenter” and “informationcenter” appearing in the respective domain names were complaintcenters, infocenters and informationcenters provided by the Complainant.
As illustrations of the consistent view of UDRP panels on this issue, it is not necessary to go any further than those cases cited by the Complainant where it has been held that the description of similarly common words such as “podcast” and “warehouse” that have been added to the Complainant’s T-MOBILE mark have not been sufficient to distinguish the resulting domain names from the trademark: Deutsche Telekom AG v. Avericom, WIPO Case No. D2006-0949 and Deutsche Telekom AG v. Wireless Warehouse, WIPO Case No.D2005-0723.
In response, the Respondent says in effect that internet users could not be confused by the domain names that refer to complaint centers, because no-one would assume that the Complainant would be providing facilities to deal with complaints about itself. The Panel does not accept that argument, for it is a known fact that many commercial enterprises provide such a service to handle complaints, that this is especially so in the telecommunications industry, that in some countries it is compulsory and that many firms prefer to have the first opportunity to rectify complaints before the customer goes to an industry ombudsman or to court. With respect to the domain names that refer to infocenters or information centers, it is likewise unrealistic to think that a company in modern times would not use the internet to convey information about itself. Thus it is clear that at least some internet users would assume that the domain names in question were official domain names of the Complainant; that assumption is the reason why in each case the domain name is confusingly similar to the trademark.
It has also been held many times that the use of hyphens, as in nine of the present disputed domain names and the necessary presence of the gTLD suffixes “.com”, “.info” and “.net” in all of them cannot detract from their confusing similarity to the trademark.
As the Complainant has also proven that it is the owner of the trademark, it has made out the first of the three elements that it must establish.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain names.
But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, 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 trademark or service mark at issue.
Thus, if the Respondent proves any of these elements or indeed anything else that shows it has a right or interest in the domain name, the Complainant will have failed to discharge its onus and the Complaint will fail.
It is well established that, as it is put in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, “a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.
The Panel, after considering all of the evidence in the Complaint and the exhibits attached to it, finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the domain names. That prima facie case comes from the facts that the Complainant has not authorized the Respondent to use its famous name and trademark, there is no evidence that the Respondent was known as “t-mobile” or “tmobile” before the domain names were registered and no evidence showing that he has any trademark or service mark rights to the name. That is more than sufficient evidence to support a finding of a prima facie case.
The Respondent then seeks to rebut the prima facie case by arguing that he has a legitimate interest in the domain names on the ground that before he had notice of the dispute, he used the domain names in connection with a bona fide offering of goods and services, or alternatively that he is making a legitimate noncommercial or fair use of the domain names by diverting users to a service called Free Speech Center, a service that is to be found at “www.freespeechcenter.com” where he set up two forums, T-Mobile Complaint Center and T-Mobile Information Center.
In the context of the provisions of the Policy, the Respondent thus claims that by so forwarding messages to the Free Speech Centre he can rely on paragraph 4(c)(i) and paragraph 4(c)(iii) of the Policy respectively.
If the Respondent can make out that case on the facts, he may be able show that he has a right or legitimate interest in at least some of the domain names. That is so because some UDRP panelists have held that the use of a domain name for a criticism website gives rise to a right or legitimate interest in the domain name. The WIPO Overview puts the issue in the following way.
“In the event that a domain name confusingly similar to a trademark is being used for a genuine non-commercial free speech web site, there are two main views. There is also some division between proceedings involving United States parties and proceedings involving non-United States parties, with few non-United States panelists adopting the reasoning in View 2.
View 1: The right to criticize does not extend to registering a domain name that is identical or confusingly similar to the owner’s registered trademark or conveys an association with the mark.
Relevant decisions: Skattedirektoratet v. Eivind Nag, WIPO Case No. D2000-1314, Transfer; Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763, Transfer; Triodos Bank NV v. Ashley Dobbs, WIPO Case No. D2002-0776, Transfer; The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank v. Personal and Pedro Lopez, WIPO Case No. D2003-0166, Transfer; Kirkland & Ellis LLP v. DefaultData.com, American Distribution Systems, Inc., WIPO Case No. D2004-0136, Transfer
View 2: Irrespective of whether the domain name as such connotes criticism, the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if the use is fair and non-commercial.
Relevant decisions: Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc., and Bridgestone Corporation v. Jack Myers, WIPO Case No. D2000-0190, Denied; TMP Worldwide Inc. v. Jennifer L. Potter, WIPO Case No. D2000-0536, Denied; Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014, Denied.
Imposing further conditions as to domain name and use: Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206, Denied.”
The Respondent has therefore squarely raised an issue that has been the subject of extensive debate in UDRP proceedings and one that still gives rise to differences of opinion. Thus, in Bonneterie Cevenole S.A.R.L -v- Sanyouhuagong, WIPO Case No D2001-1309 it was said:
“The Panel is well aware that a number of distinguished Panelists take the view that a bona fide non-commercial criticism site connected to a domain name featuring the trade mark of a subject of the criticism is fair use of the domain name for the purposes of the Policy.”
That view has been followed in cases such as Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014.
Other panelists, however, including the panelist in Bonneterie Cevenole S.A.R.L. -v- Sanyouhuagong (supra) have taken a different view; see also Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300.
What is fundamental, however, to all such considerations is whether the Respondent is conducting a criticism site as a matter of fact. In other words, if a respondent wishes to rely on the criticism site and free speech grounds, he must prove on the balance of probabilities that on the facts of the individual case it really is a criticism site that is being conducted and also that it is being conducted in the pursuit of free speech and not as a guise for an essentially commercial or other improper purpose. That view is a matter of the proper interpretation of the Policy and it is also a view expressed by the WIPO Overview where it is said:
“This section only concerns sites that practice genuine, non-commercial criticism. There are many UDRP decisions where the respondent argues that the domain name is being used for a free speech purpose, but the panel finds that, in fact, the domain name is being used for commercial gain. See Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000-0477 among others, Transfer.”
It is here that the Respondent’s case falls down. That is so because the Panel is not satisfied that the Respondent ever intended to establish a genuine criticism site or that he did in fact did so.
In the first place, it is not enough for the Respondent to assert that he established such a site; there must be evidence to persuade the Panel to reach that conclusion and, although in some cases a panel might give a respondent the benefit of the doubt, in the present case there is no basis for doing so.
Secondly, the domain names were registered on July 12, 2006, and the Complaint was issued on May 7, 2007. The Complainant has exhibited to the Complaint at Annex H printouts of the websites to which the disputed domain names resolved on May 3, 2007, i.e. shortly before the Complaint was issued. It appears from that exhibit that as at May 3, 2007, all attempts to contact the websites to which the domain names resolved produced the same result, namely that “The requested URL could not be retrieved”, showing that the domain names were being passively held and had not been put to any use. Clearly, no criticism site had been established by May 3, 2007.
The Complainant also submitted in its supplementary filing that the domain names were not in use at the date the Complaint was issued, namely May 7, 2007.
The Respondent has not sought to rebut any of this material. The Panel therefore reaches the conclusion on the evidence that until the filing of the Complaint, the Respondent had not taken any steps to set up the two forums, to forward communications to them or even to use the domain names in any way other than by passively holding them. If the Respondent had intended to set up a criticism site it might be expected that he would have done something about it within a reasonable time from registering the domain names and certainly before the Complainant took action to reclaim them ten months later.
Thirdly, if the Respondent really intended to set up a genuine criticism site, he could have adequately done so by registering one domain name or, at most, one referring to complaints and one referring to information. To register one domain name may have been legitimate, but to register 18 domain names is not consistent with a genuine attempt to create a legitimate avenue for criticism and is more consistent with an intention to cast as wide a net as possible by registering an armory of domain names under the false pretence of encouraging debate and discussion.
The views just expressed are consistent with the view taken by panels in the cases cited by the Complainant such as CBS Broadcasting Inc., f/k/a CBS Inc v. Nabil Z. aghloul, WIPO Case No. D2004-0988, where the panel said on similar facts to those in the present case:
“The Respondent did not launch his criticism website until almost a year after he registered the disputed domain name, and then only after receiving a cease and desist letter from the Complainant. There is no credible evidence in the record that the Respondent had ever formed the intent to use the disputed domain name in connection with a criticism site until several months after the Complainant issued its cease and desist letter. In fact, the Panel has serious reservations whether the Respondent’s subsequent creation of the website was motivated by anything other than a desire to frustrate the Complainant’s efforts to obtain the transfer of a domain name.
The Respondent has submitted no evidence of his demonstrable preparations to use the domain name for a criticism website prior to his receipt of the Complainant’s cease and desist letter.”
Accordingly, the panel found that the Respondent had not established a right or legitimate interest in the domain name by reason of a criticism site. Similar Observations were made in Kirkbi AG v. Michele Dinoia, WIPO Case No.D2003-0038 and in PepsiCo, Inc v. Kieran, WIPO Case No.D2005-0629, also cited by the Complainant.
For the same reasons, the Panel finds in the present case that the Respondent never formed the intention to use the domain names or any of them in connection with a criticism site until after the Complainant was issued and that the Respondent’s subsequent forwarding of communications onto the Free Speech Center at “www.freespeechcenter.com” was motivated by a desire to frustrate the Complainant’s efforts to obtain the transfer of the domain names and to achieve the Respondent’s own ends.
Fourthly, the paucity of evidence as to the actual use of the alleged criticism sites subsequent to their establishment is such that the Panel does not accept as a matter of fact that they are genuine criticism sites. At the time of writing this decision, there have been only two ‘threads’ posted on the T Mobile Complaint Center, one posted on June 17, 2007 and the other on June 27, 2007. One of those two ‘threads’ is also posted on the T Mobile Information Center, but there are no other contributions to that forum.
Moreover, a perusal of the website as a whole raises doubts whether its purpose is to encourage genuine debate on the services provided by the Complainant or other telecommunications companies or whether there is some other agenda afoot.
Thus, one of the two contributors to the T-Mobile Complaint Center has another forum on the same website which is devoted to promoting litigation by the present Respondent in which he is seeking many millions of dollars in a contractual dispute. Such a use of a website claimed to be a criticism site has been used by at least one UDRP panel to show that the site is not a genuine criticism site at all but one designed to produce a commercial advantage for the registrant: Asset Loan Co. Pty Ltd v. Gregory Rogers WIPO Case No. D2006-0300.
The Panel must make an assessment of the totality of the evidence and having done so is not satisfied that the Respondent has made out a case that it intended to or did in fact establish a criticism site or that the Respondent has made out any other basis for concluding that it has a right or legitimate interest in the domain names.
The Respondent has therefore not rebutted the prima facie case against it and the result is that the Complainant has made out the second of the three elements that it must establish.
C. Registered and Used in Bad Faith
The Complainants must prove on the balance of probabilities both that the domain names were registered in bad faith and that they are being used in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Further guidance on how to implement this requirement is to be found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which shall be evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances are:
“(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 the respondent’s documented 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 Respondent 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, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s 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 the respondent’s website or location or of a product or service on the site or location.”
So far as bad faith registration is concerned, the Complainant relies on the fact that its trademarks are famous worldwide and that the Respondent must be taken to have known of them when he registered the disputed domain names. In the absence of a plausible, legitimate explanation from the Respondent for having done this, the Panel is entitled to draw the inference that it was done for bad motives and to trade in some way on the Complainant’s famous mark, as UDRP panels have often held, as can be seen from cases involving the present Complainant itself: Deutsche Telekom AG v. Pimptel Inc., WIPO Case No. D2005-0928; Deutsche Telekom AG v. Gems N Pearls International Holding, WIPO Case No. D2005-0820; and Deutsche Telekom AG v. Alpha Pacific, WIPO Case No. D2005-0722.
The Respondent has replied to this argument by putting two propositions. The first is simply to deny that he has been in breach of each of the provisions of paragraph 4(b) of the Policy. That is an inadequate response, for the Respondent should have condescended to give at least sufficient particulars of his motivation in registering the domain names to enable the Panel to reach some conclusions on the totality of the evidence. As the Respondent has not done this, the Panel cannot draw any other conclusion than that there is no plausible, legitimate explanation for his having registered so many domain names all of which are based on the Complainant’s famous trademark. Moreover, the Panel has already found that the Respondent’s recent assertion that he has been conducting a criticism site is untrue; accordingly, the Panel also finds that when the Respondent registered the domain names he did not intend to conduct a criticism site.
Secondly, the Respondent argues that “There is no advertising of any kind or reference or recommendations to use the services of Complainant’s competitors” and “The Respondent does not sell advertising on the domains in question and does not charge for the services provided.”
Such considerations are not determinative, for the provisions of paragraph (b) of the Policy are clearly aimed at negating attempts by third parties to extort money from trademark owners, prevent them from registering domain names to reflect their trademarks, disrupt their business and cause confusion, all of which activities can be engaged in just as effectively whether or not the third party uses advertising, references, recommendations or charges, although such an additional element may of course exacerbate any given case.
Accordingly, the Panel concludes that the Respondent registered the domain names in bad faith within the meaning of paragraph 4(b) of the Policy.
The Complainant originally contended that within the principles established in Telstra Corporation Limited v. Nuclear Marshmellows (supra), the Respondent was also guilty of bad faith use because it had acted in bad faith by its passive holding of the domain names. That was a submission made before the Respondent established his alleged criticism site. When that new state of affairs came to the notice of the Complainant in the Respondent’s Response, it made a new submission to the effect that, as the Respondent had merely set up a pseudo criticism site, it was “acting in bad faith in order to impede the Complainant.” That conclusion was reinforced, the Complainant said, by the fact that the Respondent used a privacy service for the domains, a fact that emerged only when the Center elicited from the registrar, Registration Technologies, that the actual registrant was the present Respondent.
The Panel accepts these arguments and they establish bad faith use of the domain names. Moreover, the Panel has already found that the conduct of the Respondent in registering and holding the domain names from July 12, 2006 until the Complaint was issued on May 7, 2007, establishing its alleged criticism site only after that date and claiming that the site is a genuine criticism site when that assertion is doubtful at best, did not give rise to a legitimate interest in the domain names. The Panel concludes that such conduct also amounts to bad faith use of the domain names.
Accordingly, the Complainant has established that the domain names were registered and are being used in bad faith and the Complainant has made out the third of the three elements that it must establish.
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 names <t-mobilecomplaintcenter.com>, <tmobilecomplaintcenter.com>, <t-mobilecomplaintcenter.info>, <tmobilecomplaintcenter.info>, <t-mobilecomplaintcenter.net>, <tmobilecomplaintcenter.net>, <t-mobileinfocenter.com>, <tmobileinfocenter.com>, <t-mobileinfocenter.info>, <tmobileinfocenter.info>, <t-mobileinfocenter.net>, < tmobileinfocenter.net>, <t-mobileinformationcenter.com>, <tmobileinformationcenter.com>, <t-mobileinformationcenter.info>, <tmobileinformationcenter.info>, <t-mobileinformationcenter.net> and <tmobileinformationcenter.net> be transferred to the Complainant.
The Honourable Neil Anthony Brown, QC
Date: June 29, 2007