The Complainant is Deutsche Telekom AG of Bonn, Germany, represented by Lovells LLP, Germany.
The Respondent is Pluto Domain Services Private Limited of Maharashtra, India.
The disputed domain name <t-mobilstore.com> is registered with Lead Networks Domains Pvt. Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2008. On December 17, 2008, the Center transmitted by email to Lead Networks Domains Pvt. Ltd. a request for registrar verification in connection with the disputed domain names <t-mobilstore.com>, <t-mobilepuertorico.com> and <tmobilepuertorico.com>. On December 19, 2008, Lead Networks Domains Pvt. Ltd. transmitted by email to the Center its verification response disclosing different registrants for each of three domain names and providing contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 19, 2008 providing the registrants' and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint, noting that if the latter cannot be shown (at least on a prima facie basis) to be the same or related entities, it may be appropriate (pursuant to Rule 3(c) of the Policy) to file separate Complaints against each unrelated domain name holder. On January 12, 2009, the Complainant withdrew the original Complaint and elected to file a separate amended Complaint with respect to the domain name <t-mobilstore.com> on January 14, 2009. The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 January 20, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 9, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 10, 2009.
The Center appointed Mihaela Maravela as the sole panelist in this matter on February 23, 2009. 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 following facts have been alleged by the Complainant and not refuted by the Respondent.
The Complainant is Europe's largest telecommunications company and one of the worldwide engines of innovation in the industry. The Complainant covers the entire spectrum of modern telecommunications.
The Complainant's subsidiary T-Mobile International AG & Co. KG (T-Mobile) is one of the largest GSM mobile communications providers in the world. T-Mobile offers all digital voice, messaging and high-speed data services to nearly 120 million customers worldwide.
T-Mobile is the corporate name under which the Complainant's business in the mobile communications sector is conducted.
The Complainant has registered a large number of national, Community and international trademarks reflecting the term “T-Mobile”, including, inter alia, Indian trademarks No. 1247181 and No. 1327567, International Registrations No. 680034 and No. 864393 and European Community Trademark No. 485441. Besides, the Complainant has also registered a number of trademarks for the designation “T-Mobil”, such as European Community trademark No. 214452 and International Registration No. 660483.
The disputed domain name was registered on May 10, 2008.
The Complainant contends that the disputed domain name is confusingly similar to the Complainant's trademarks T-MOBIL and T-MOBILE. The term “t-mobil”, which is also almost identical to the designation “T-Mobile” that is internationally used to identify the Complainant, is the dominant and distinctive component of the domain name. The addition of the generic term “store” does not prevent the disputed domain name from being confusingly similar to the Complainant's trademarks. Due to the tremendous reputation of the trademarks T-MOBILE and T-MOBIL, the term “t-mobil” is considered by the public as the dominant component of the disputed domain name, while the term “store” is a mere descriptive addition and therefore can be disregarded in the assessment of a likelihood of confusion. The fact that the disputed domain name has a different capitalization in comparison to the Complainant's trademarks T-MOBIL and T-MOBILE has got no effect.
The Complainant contends that the Respondent does not use the disputed domain name for a bona fide offering of goods or services and there is no indication that the Respondent was commonly known by the disputed domain name. Also the Respondent is not making a legitimate noncommercial or fair use of the domain name. Furthermore, 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 T-MOBILE marks. The disputed domain name <t-mobilstore.com> was previously used for a website with Sponsored Links. Presently, the Respondent does not use the disputed domain name to operate a website.
The Complainant contends that the disputed domain name was registered and used in bad faith. It contends the fact that the disputed domain name was transferred to another registrant in this case to another privacy service a short time after the Complainant first contacted the then registered owner of the domain name by sending a cease-and-desist letter and this suggests bad faith on the part of the Respondent. In addition, the disputed domain name was registered using the private registration service of “Private Whois Escrow Domains Private Limited” of Mumbai, India, which allows the true domain name owners not to disclose their actual contact details in the WhoIs record. The Complainant contends that the Respondent has already been involved in several domain name disputes and that the Respondent has not answered any of the Complainant's attempts to contact the Respondent with regard to the disputed domain name. Also, the Complainant contends that given the fame of the Complainant's trademark T-MOBILE and the use of the term “t-mobil(e)” in the disputed domain name, the Respondent certainly knew about the Complainant's T-MOBILE trademarks and business name when registering the domain name. The Complainant affirms that presently, there is no active use of the disputed domain name while <t-mobilstore.com> was used for a website with Sponsored Links.
The Respondent did not reply to the Complainant's contentions.
Where, as in this case, a respondent does not submit a response, the rules of due process require the Panel to verify, to the extent possible, that the Respondent is aware of the present proceedings. The Panel is satisfied, on the basis of the file documentation, that this is the case.
Based on the methods employed to provide the Respondent with notice of the Complaint, the Respondent's obligation under the registration agreement to maintain accurate and current contact information, the Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by the Center. See also Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814.
In this respect it should also be emphasized that the Center must attempt reasonably to contact the Respondent, but can do no better than to send communications to the email and physical address on official record or provided in the Complaint. In the present case the Complaint and associated communications were sent to the physical and email addresses available in the WhoIs data base and provided by the Registrant. The Panel is satisfied that the Center has exercised the utmost care and has fulfilled its obligations under paragraph 2 of the Rules. See also Sanofi-aventis v. Protected Domain Services and Jan Hus, Husiten, WIPO Case No. D2008-0463.
The Panel therefore assumes that the Respondent has received the Complaint and is aware of the proceedings, but has chosen not to respond (See, e.g. Pizza Hut International, LLC v. Kim Beom Sung, WIPO Case No. DRO2002-0003).
“A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”, Paragraph 15(a) of the Rules.
Applied to this case, paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the domain name registered by the Respondent is identical or confusingly similar to the trademark 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.
The Panel must find that: (a) the Complainant has a trade mark or service mark; and (b) that the contested domain name is identical or confusingly similar to that trade mark or service mark.
Here, the Complainant has proved it has rights in the T-MOBILE Indian trademarks No. 1247181 and No. 1327567, T-MOBILE International Registrations No. 680034 and No. 864393 and T-MOBILE European Community Trademark No. 485441, which were all registered prior to the registration of the disputed domain name. Also, the Complainant has proved it has registered a number of trademarks for the designation “T-Mobil”, such as the European Community trademark No. 214452 and the International Registration No. 660483, prior to the registration of the disputed domain name.
The question of resemblance for the purpose of the Policy requires a comparison of the disputed domain name to the trademark rights which have been proved.
Here, the domain name has two differences from the trademark of the Complainant “T-Mobil”: the addition of the “.com” suffix and the addition of “store” to the trademark.
The addition of the generic top-level domain (gTLD) “.com” is without legal significance from the standpoint of comparing the disputed domain name to Complainant's trademarks since use of a gTLD is required of domain name registrants, “.com” is one of only several such gTLDs, and “.com” does not serve to identify a specific enterprise as a source of goods or services. See also Ticketmaster Corporation v. DiscoverNet, Inc., WIPO Case No. D2001-0252; Williams-Sonoma, Inc. d/b/a Pottery Barn v. John Zuccarini d/b/a Country Walk, WIPO Case No. D2002-0582 concerning the inclusion of a gTLD.
Many panels have established that the addition of words or letters to a mark used in a domain name may alter the fact that the domain name is confusingly similar to the mark. The addition of a generic word to a trademark will not avoid a determination that the contested domain name is confusingly similar. See Hoffmann-La Roche Inc. v. Lindy Shaw, WIPO Case No. D2008-0985. The fact that a domain name wholly incorporates a complainant's trademark may be sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such marks. See Oki Data Americas Inc. v. ASD Inc., WIPO Case No. D2001-0903. The addition of a generic term does not serve to distinguish the domain name from the trademark, but may reinforce the association of the complainant's trademark with a domain name. See Viacom International Inc. v. Frank F. Jackson and Nancy Miller, WIPO Case No. D2003-0755; Caterpillar Inc. v. Roam the Planet Ltd., WIPO Case No. D2000-0275; Société Air France v. RBlue, WIPO Case No. D2005-0290.
In this case, apart from the generic top level domain, the domain name consists of the Complainant's trademark T-MOBIL and the term “store”. The Panel agrees with the opinion expressed by previous panels that the generic term “store” and the gTLD “.com” have no trademark significance and, thus, their addition to the domain name does not avoid a finding of confusing similarity between the domain name and the trademark (see Lilly ICOS LLC v. Mama Mia, WIPO Case No. D2006-0385; F. Hoffmann-La Roche AG v. Roelof Piersma, WIPO Case No. D2006-0225; Daniel Flachaire v. Raffaele Carofiglio, WIPO Case No. D2007-0163).
In the absence of any argument to the contrary from the Respondent, this Panel concludes that the domain name is confusingly similar to the Complainant's trademarks. See also Reuters Limited v Global Net 2000, Inc, WIPO Case No. D2000-0441.
The Panel therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
The consensus view of WIPO panelists concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a 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.” (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.1.)
In the present case the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the domain name and Respondent has failed to assert any such rights. (See, e.g. Barbara Brennan Inc. v. Texas International Property Associates, WIPO Case No. D2008-0351; Sanford Winery Company v. Matt Geiser, WIPO Case No. D2008-0210).
By not submitting a Response, the Respondent has failed to invoke any circumstances, which could demonstrate any right or legitimate interest in the domain name. Furthermore, considering that the Respondent has not contested that it currently does not use the domain name (it does not resolve to a website created by the Respondent or some other on-line presence of the Respondent), there are no indications that the Respondent could demonstrate a right or legitimate interest in the domain name. (See, e.g. Pizza Hut International, LLC v. Kim Beom Sung, supra).
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name.
To fulfill the third requirement, the Complainant must prove that the domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out a number of circumstances that shall, in particular but without limitation, be evidence of registration and use of a domain name in bad faith:
(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 to the Complainant who is the owner of the trademark, or to a competitor of the Complainant, for a valuable consideration in excess of the Respondents documented out-of-pocket costs directly related to the domain name.
(ii) Circumstances indicating that the Respondent has registered the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct.
(iii) Circumstances indicating that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor.
(iv) By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his 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 said website location or of a product or service on that website location.
However, the requirement of the Policy of a domain name “being used in bad faith” is not limited to positive actions (see, e.g. Beiersdorf AG v. Web4comm Srl Romania, WIPO Case No. DRO2005-0002). In this particular case, the following actions are considered as use in bad faith:
- the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name despite the cease and desist letters sent by the Complainant,
- the Respondent has not contested any of the allegations made by the Complainant,
- the Complainant trademark T-MOBILE is well-known (see Deutsche Telekom AG v. Wireless Warehouse, WIPO Case No. D2005-0723; Deutsche Telekom AG v. WWW Enterprise, Inc., WIPO Case No. D2004-1078; Deutsche Telekom AG v. Dexcom Holdings B.V., WIPO Case No. DTV2006-0001),
- the Respondent has already been involved in several domain name disputes (see Newcastle Permanent Building Society Limited v. Pluto Domain Services Private Limited, WIPO Case No. D2008-1468; Sanofi-Aventis v. PLUTO DOMAIN SERVICES PRIVATE LIMITED, WIPO Case No. D2008-1483; T-N-T Carports, Inc. v. Private Who is For bpelprip1701 / Pluto Domain Services Private Limited, WIPO Case No. D2008-1605, Deloitte Touche Tohmatsu v. Pluto Domain Services Private Limited./Private Whois For dpelprip 1703, WIPO Case No. D2008-1617; AB Electrolux v. Pluto Domain Services Private Limited / Private Who is For cbelprip 1702, WIPO Case No. D2008-1627),
- Any use of the domain name would lead the public to the conclusion that it, and its connecting websites, were associated with the Complainant.
In light of these particular circumstances, the Panel concludes that the Respondent's passive holding of the domain name in this particular case satisfies the requirement of paragraph 4(a)(iii) that the domain name “is being used in bad faith” by the Respondent.
Also, particularly given the fame of the Complainant and the market value of their marks, the Panel agrees with the view expressed in AT&T Corp. v. Linux Security Systems, WIPO Case No. DRO2002-0002, that:
“Most of the time it is quite difficult, if not impossible to actually show bad faith with concrete evidence, particularly given the limited scope of the inquiry in these proceedings; one should not expect to easily find “the smoking gun”. While bad faith cannot be presumed, once Complainant has presented some evidence pointing in that direction, it is then incumbent upon Respondent to either respond or explain why its conduct should not be assimilated to bad faith. Panel's understanding of the Policy is that although the initial burden to prove Respondent's bad faith in the registration or the use of the disputed Domain Name relies squarely on the shoulders of Complainant, such obligation is only to make out a prima facie case, and once it has done so, as Panel finds it did in the present case, it is then incumbent upon the Respondent to either justify or explain its business conduct (if not to demonstrate the contrary). Failure to do so will, in some circumstances, enable the Panel to draw a negative inference. In the case at hand, the Respondent has elected (or failed) not to put forward any justification for its registration and use of the Domain Name and, in the circumstances, the Panel does draw a negative inference out of such omission. See Société Des Bains De Mer Et Du Cercle Des Étrangers à Monaco v. Iggi Networks Media Group, WIPO Case No. D2000-1324 (December 18, 2000), Hebdomag Inc. v. Illuminaty Marketing, WIPO Case No. D2001-0206 [(April 7, 2001)] and InterTrade Systems Corporation v. Donna Lawhorn, FA0204000112488 Nat. Arb. Forum (July 15, 2002).”
Given the above circumstances, the Panel concludes that the domain name was registered and used in bad faith.
The Panel concludes that the Complainant has succeeded in proving the three elements of 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, <t-mobilstore.com> be transferred to the Complainant.
Dated: March 9, 2009