WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Deutsche Telekom AG v. Domain Park Limited
Case No. D2008-0624
1. The Parties
The Complainant is Deutsche Telekom AG, Bonn, Germany, represented by Lovells LLP, Germany.
The Respondent is Domain Park Limited, Berlin, Germany.
2. The Domain Name and Registrar
The disputed domain name <tmobilerebait.com> is registered with Rebel.com Services Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2008. On April 23, 2008, the Center transmitted by email to Rebel.com Services Corp a request for registrar verification in connection with the domain name at issue. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 9, 2008. 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 14, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 3, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 4, 2008.
The Center appointed Ana María Pacón as the sole panelist in this matter on June 27, 2008. 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 language of the proceeding is English.
4. Factual Background
The Complainant is a telecommunication company based in Germany. The Complainant offers many services in the telecommunication branche. The Complainant has presence in more than 65 countries worldwide with focus in Europe, the United States of America and Asia.
The Complainant Deutsche Telekom AG provides GSM mobile communications through its subsidiary T-Mobile International AG & Co. KG. The Complainant’s business name in this sector is ‘T-Mobile’. The Complainant has registered the trademarks T-MOBILE and TMOBILE in various jurisdictions in the international classes 9, 14, 16, 25, 28, 36, 37, 38 and 42. These trademarks have been also registered as domain names in the “.com”, “.us”, “.net”, “.co.uk” and “.de” TLDs.
According to a printout of the WHOIS database the disputed domain name <tmobilerebait.com> was first registered on June 14, 2005 in favor of Rebel.com Corp.
5. Parties’ Contentions
The Complainant takes the position that the contested domain name is confusingly similar to the Complainant’s trademark T-MOBILE. The addition of the generic term “rebait” (phonetically identical with the word rebate) and the fact that the disputed domain name does not contain a hyphen between the letter “t” and the word “mobile” are not sufficient to avoid the confusing similarity. The consumers may be mislead into believing that the Respondent is somehow connected with the Complainant.
2. No legitimate interests
The Complainant contends that the Respondent is not, and never has been, a representative or licensee of Complainant, nor is Respondent otherwise authorized to use the Complainant’s marks. There is also no indication that the Respondent was known by the name “T-Mobile” prior to the registration of the disputed domain name.
3. Bad faith
The Complainant also states that the Respondent is not making a legitimate use of the disputed domain name. On the contrary, it alleges that the domain name is being used for a website that contains sponsored links among others relating to telecommunications services. Annex I of the Complaint brings printouts evidencing this allegation.
In addition to the above, the Complainant reports that in January 2008 it learnt that several domain names were infringing its trademark rights – namely the domain names <tmobilemusicdownload.com>, <tmobilepicctures.com>, <t-mobilepicturemessage.com>, <t-mobilejournal.com>, <t-mobilen.com>, <t-mobilphone.com> and <tmobilephotoalbum.com>. The domain names were registered partly for Domain Park Limited, Germany, partly for Domain Park Limited, Samoa. Due to the fact that both companies use the same e-mail address and telephone number, the Complainant concludes that both belong to the same organization. On February 2008 the Complainant sent a cease and desist letter to the Respondent. It never answered. On April 22, 2008 the Complainant filed a complaint before the Center against the Respondent regarding the domain names <t-mobilejournal.com>, <t-mobilelpictures.com>, <tmobilephotoalbum.com>, <tmobilepicctures.com>, <t-mobilepicturemessage.com>, <tmobilerebait.com>, <t-mobilen.com>, <t-mobilphone.com> and <telekombih.net>. Shortly afterwards, the registration of all the domain names – except for <tmobilerebait.com> were cancelled by the Respondent.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide a Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The Policy, in its paragraph 4(a), determines that three elements must be present and duly proven by a complainant to obtain relief. These elements are:
i. The subject 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 in respect to the domain name; and
iii. The Respondent’s domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
A complainant must establish two elements under paragraph 4(a)(i) of the Policy:
i) the complainant has rights in a trademark or a service mark, and ii) the disputed domain name is identical or confusingly similar to the mark.
The Complainant has provided sufficient evidence of its rights in the trademark T-MOBILE, which is registered in several countries where the Complainant does business.
The only differences between the Complainant’s trademark and the disputed domain name <tmobilerebait.com> are the addition of the generic term “rebait” and the deletion of a hyphen between the letter “t” and the world “mobile”. In fact, the disputed domain name incorporates the entirety of the trademark and is clearly designed to invoke the T-MOBILE trademark. The addition of the generic expression “rebait”, a misspelled, but phonetically identical version of the common word “rebate” would likely draw Internet users to the conclusion that the domain name relates to the Complainant’s trademark. Thus, Internet users would probably assume that the “rebait/rebate” appearing in the disputed domain name is a rebate provided by the Complainant. (See e.g; Deutsche Telekom AG v. Avericom WIPO Case No. 2006-0949). Further, the deletion of a hyphen between the word elements is not sufficient to avoid confusion between the domain name and the Complainant’s trademark. It does not bring enough distinctiveness to the domain name. In fact, in doing so the domain name keeps the same general appearance and sound as the trademark, remaining confusingly similar to the registered mark. (See e.g; VeriSign Inc. v. Bin g Glu / G Design WIPO Case No. D2007-0421, Fort Knox National Company v. Ekaterina Phillipova WIPO Case No. D2004-0281).
The Complainant has demonstrated the first element of the Policy.
B. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy sets out certain circumstances in particular but without limitation, which if found by the Panel to be proven on its evaluation of all the evidence presented, shall demonstrate rights or legitimate interests on the part of the Respondent.
The Respondent has not submitted a response and has failed to invoke any circumstances that demonstrate any rights or legitimate interests in the domain name.
The Complainant does not appear to have licensed or otherwise authorized the Respondent to use its trademark or any domain name incorporating the trademark. The Complainant has argued that the Respondent has no rights or legitimate interests in the domain name in accordance with paragraph 4(c) of the Policy, making out a prima facie case that the Respondent lacks such rights. The Respondent has defaulted and thus has not provided any evidence of any rights or legitimate interests in the disputed domain name.
Thus, the Panel concludes that the Respondent has no rights or legitimate interests, within the meaning of paragraph 4(a)(ii) and (c)(i-iii) of the Policy in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Policy paragraph 4(a)(iii) requires the Complainant to prove that the Respondent registered and used the disputed domain name in bad faith. The language of Policy paragraph 4(a)(iii) requires that both bad faith registration and bad faith use be proved.
The Policy, paragraph 4(b) indicates that certain circumstances may, “in particular but without limitation” be evidence of bad faith.
In the present case, there are several circumstances indicating that the Respondent must have been aware of the Complainant’s trademark at the time of its registration of the domain name at issue.
The Complainant’s trademark T-MOBILE is a well-known trademark in the sector of telecommunications. The Respondent’s website displays services ― among others ― in the same field of business. It is common to know the trademarks of competitors.
The content of the Respondent’s website, i.e. sponsored links to a variety of products, is, in the view of the Panel, an indication of the Respondent’s intent to attract consumers to its website by taking advantage of the Complainant’s name and goodwill (paragraph 4(b)(iv) of the Policy).
The Respondent was contacted by the Complainant in February 2008 on two occasions in relation to its registration of several domain names that included the Complainant’s trademark T-MOBILE. The Respondent did not answer, but shortly after the Complainant filed a complaint against the Respondent it cancelled all the domain names except the disputed domain name.
Thus, the Panel concludes that the disputed domain name <tmobilerebait.com> 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 <tmobilerebait.com> be transferred to the Complainant.
Ana María Pacón
Dated: July 14, 2008