WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Deutsche Telekom AG v. Thanh Nguyen, Thanh Nguyen Mobile
Case No. DBZ2008-0002
1. The Parties
Complainant is Deutsche Telekom AG, of Bonn, Germany, represented by Lovells, Germany.
Respondent is Thanh Nguyen, Thanh Nguyen Mobile, of Ho Chi Minh, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <tmobile.bz> is registered with Dotster, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 25, 2008. On February 28, 2008, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain name at issue. On February 28, 2008, Dotster, Inc. 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 February 29, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 20, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 25, 2008.
The Center appointed Jeffrey Steinhardt as the sole panelist in this matter on April 3, 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.
4. Factual Background
Complainant has numerous trademark registrations for “T-mobile”. Among these are International Registrations Nos. 680034 and 680035, covering International Classes 9, 36, 37, 38, 41 and 42. International Registration No. 680035 has a priority date of August 31, 1996 and is registered in approximately 50 countries, including Vietnam.
5. Parties’ Contentions
Complainant avers that it is Europe’s largest telecommunications company. Complainant states that it has a presence in the major economic centers of the world, serving customers in more than 65 countries. Complainant’s subsidiary T-Mobile International AG & Co. KG is allegedly one of the world’s largest GSM mobile communications providers, offering services to 112 million customers.
Complainant avers that the name “T-Mobile” is universally recognized as identifying Complainant and that “T-Mobile” is the corporate name under which Complainant conducts its mobile communications business. Complainant states that Complainant and its subsidiary T-Mobile USA have registered and use the domain names: “t-mobile.com/.us/.net/.co.uk/.de” and “tmobile.com/.us/.net/.co.uk/.de” in association with their mobile communications business.1
Identical or Confusingly Similar to Complainant’s Trademark
Addressing the first element of the Policy, Complainant contends that the disputed domain name <tmobile.bz> is confusingly similar to its “T-mobile” trademarks. Under panel decisions, Complainant argues, the differences in capitalization and the elimination of the hyphen in Respondent’s domain name are insignificant.
No Rights or Legitimate Interests in Domain Name
Addressing the second element of the Policy, Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name and that no circumstances listed under paragraph 4(c) of the Policy are present. To this end, Complainant notes that Respondent uses the contested domain name for a website offering mobile phones although Respondent (1) has no relationship with Complainant (2) has no authorization to use the “T-mobile” marks (3) is not Complainant’s licensee, and (4) is not promoting “T-mobile” products or services. Averring that there is no indication that Respondent was known by the disputed name before registration, and that Respondent is not making a legitimate non-commercial or fair use of the domain name, Complainant contends it has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.
Registration and Use of Domain Name in Bad Faith
Complainant also contends that the disputed domain name has been registered and is being used in bad faith, as more fully described below.
Complainant contends that Respondent registered the name in bad faith because Complainant’s trademark and worldwide business were established many years before the disputed domain name was registered on August 3, 2007. Therefore, Complainant argues, Respondent must have known of the existence of Complainant’s trademarks when registering the disputed name.
Complainant’s authorized representatives sent a cease and desist letter in November 2007, but the registrant at that time responded that he was holding the domain for a client. Shortly after the cease and desist letter was sent, Complainant continues, the registrant transferred the domain name to Respondent. Complainant describes sending another hard-copy cease and desist letter to Respondent, the new registrant, but the letter was not deliverable. Under the circumstances, Complainant concludes that the domain name had not been transferred, but instead, the contact details were changed in order to confuse Complainant and that the change in details or the transfer of the domain name evinces bad faith.
Contending that Respondent is also using the domain name in bad faith under paragraph 4(b) of the Policy, Complainant points out that Respondent’s website initially offered mobile communications click-through links. Therefore, Complainant contends that Respondent obviously attempted to attract Internet users for profit by creating the impression of affiliation with Complainant’s well-established trademark.
Complainant further describes how it finally reached Respondent via email in January 2008. Complainant contends that Respondent used the disputed name in bad faith when on January 13, 2008, in response to the cease and desist email, Respondent offered to sell Complainant the domain name to Complainant for USD 12,000, far in excess of any out-of-pocket costs directly related to the domain name.
Based on the circumstances described above, Complainant requests transfer of the disputed domain name.
Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Notification of Proceedings to Respondent
The Policy is intended to resolve disputes concerning allegations of abusive domain name registration or acquisition, in an efficient manner. Fundamental due process requirements must nonetheless be met. The requirement that a respondent have notice of proceedings that may substantially affect its rights is such a fundamental requirement. The Policy and the Rules establish procedures to assure that respondents receive adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).
The Center notified the proceedings to Respondent by using a courier service, directed to the address listed in the whois record for the domain name. The courier package was returned as undeliverable. The Center also notified Respondent by using an email address provided by the registrar in its verification response to the Center.
The Panel is satisfied that by sending communications to the contacts made available through the registrar, and those provided by the registrant to the registrar as listed in the whois records, the Center has exercised care and has fulfilled its responsibility under paragraph 2 of the Rules to employ all reasonably available means to serve actual notice of the Complaint upon the Respondent.
B. Substance of the Complaint and Applicable Standards
The Rules require the Panel to decide a 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. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Complainant must establish these elements even if the Respondent does not reply. The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint. See, e.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
C. Identical or Confusingly Similar
Although the disputed domain name <tmobile.bz> is not identical to Complainant’s trademarks, the Panel agrees with Complainant; the Panel concludes that Respondent’s domain name is confusingly similar.
Panels disregard the domain name suffix in evaluating confusing similarity. E.g., VAT Holding AG v. VAT.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315.
Removing the suffix, the disputed domain name is almost identical to Complainant’s trademarks. The fact that Respondent’s domain name lacks a hyphen and has no initial capital does not change the Panel’s conclusion that the domain name is confusingly similar to Complainant’s “T-mobile” trademarks. BIC Deutschland GmbH & Co. KG v. Paul Tweed, WIPO Case No. D2000-0418.
D. Rights or Legitimate Interests
The Panel also concludes that Respondent has no rights or legitimate interests in the domain name.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i) – (iii).
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the respondent. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005).
Based on exhibits accompanying the Complaint, Respondent’s website presently appears to offer mobile phones.2 Complainant also submitted exhibits including earlier screen shots from Respondent’s website, which displayed a search tool and listing of links to mobile phone websites. Whether through direct offers on Respondent’s own account, or through diverting traffic to third parties using paid link advertisements, the Panel finds that Respondent is using Complainant’s marks for its own commercial purposes. See, e.g., The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (“[t]he Panel is free to infer that Respondent is likely receiving some pecuniary benefit . . . in consideration of directing traffic to that site” (citing COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082)). See also Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-0626; Sanofi-aventis v. Montanya Ltd, WIPO Case No. D2006-1079.
In the absence of a response, the Panel accepts as true Complainant’s allegations that Respondent has no authorization to use the “T-mobile” mark in its domain name and that Respondent is not commonly known by the disputed domain name. Respondent is seeking to attract Internet users through Complainant’s widely known marks for Respondent’s own commercial purposes.
The Panel therefore finds that Respondent’s use of the disputed domain name demonstrates Respondent’s lack of a legitimate non-commercial interest in, or fair use of, the domain name. See e.g., Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784. The Panel also finds there is no bona fide offering of goods or services by Respondent and that the Complaint makes out a prima facie case.
Filing no response, Respondent has not rebutted Complainant’s prima facie case or invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of its “rights or legitimate interests” in use of the domain name.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
E. Registered and Used in Bad Faith
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances, including a respondent’s concealment of identity or failure to reply to a complaint. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Panel infers that Respondent registered the disputed domain name intending to trade on the reputation of Complainant’s widely-known trademarks. Complainant’s “T-mobile” mark was registered internationally and widely used to market products and services similar to those offered on Respondent’s website for more than ten years before Respondent registered the domain name.
Complainant’s international trademark registration covers Viet Nam. Respondent is located in Viet Nam and, according to his January 13, 2008 letter, Respondent “targets” 85% of his customers in Viet Nam. The Panel infers that Respondent was aware of Complainant’s trademarks when he registered the disputed domain name. See British Sky Broadcasting Group plc. v. Mr. Pablo Merino and Sky Services S.A., WIPO Case No. D2004-0131 (“It is reasonable to conclude that only someone who was familiar with the Complainant’s mark would have registered identical domain names.”).
The Panel finds, therefore, that Respondent has deliberately attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with Complainant’s mark. This constitutes substantial evidence that Respondent registered and is using the domain name in bad faith.
Other circumstances, discussed below, also support the Panel’s conclusion that Respondent registered and is using the disputed domain name in bad faith.
Complainant argues that Respondent’s January 13, 2008 email offer to sell the domain name to Complainant is evidence of bad faith. The Panel agrees.
Registration and use of a domain name may be considered to be in bad faith under Policy paragraph 4(a)(iii) where a respondent registers or acquires the domain name primarily for the purpose of selling it to “the complainant who is the owner of the trademark . . . or to a competitor of that complainant for valuable consideration in excess” of the respondent’s out-of-pocket costs directly related to the registration. Policy, paragraph 4(b)(i).
Although not discussed in the Complaint, in his email offer to Complainant, Respondent also wrote that he received offers from others to purchase the domain name. Respondent wrote that he planned perhaps to sell it to third parties if Complainant did not enter into a settlement and purchase the domain name from Respondent within two weeks.
The disputed domain name was registered August 3, 2007 and apparently transferred to Respondent sometime after December 11, 2007.3 Only a month at most after acquiring the name, Respondent offered to sell the name to Complainant for USD 12,000. The Panel infers that this sum exceeds Respondent’s out-of-pocket costs directly related to a registration made only a few months earlier.
Under the circumstances, this Panel is compelled to find that the name was not only used in bad faith, but that Respondent also acquired the name in bad faith. Id.; see also Christian Dior Couture SA v. Liage International Inc., WIPO Case No. 2000-0098 (finding bad faith registration and use on basis of above-cost offer to sell initially made three months following registration).
In the absence of a response from Respondent, this Panel must conclude on the record before it that Respondent has registered and is using the disputed domain name in bad faith and that paragraph 4(a)(iii) of the Policy is also satisfied.4
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, <tmobile.bz> be transferred to the Complainant.
Dated: April 17, 2008
1 The Panel has determined that Complainant also owns the registration for <tmobile.com.bz>, a domain name very similar to the disputed name, in the same country code top level domain. Complainant’s <tmobile.com.bz> registration has existed since July 17, 2001. “www.belizenic.bz/cgi-bin/Registrar_YTest?action=whois&action2=whois&domain=746d6f62696c652e636f6d2e627”a”
2 The Panel has also undertaken limited factual research by viewing online pages to which the disputed domain name resolves. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions. This confirms that Respondent is offering mobile phones on the website.
3 On December 11, 2007, the then-registrant wrote to Complainant that he registered the name in August for a client, apparently referring to Respondent.
4 The Panel finds that Respondent’s failure to respond to the Complaint and the registrant’s provision of apparently inaccurate or incomplete contact information are cumulative evidence supporting the conclusion that Respondent registered and is using the disputed name in bad faith. Telstra, supra. Complainant also contends that the prompt transfer of the domain name after the then-registrant received Complainant’s cease and desist letter should be regarded by the Panel as evidence of bad faith registration and use. Concluding that there is no shortage of other evidence of bad faith registration and bad faith use, as discussed above, the Panel finds it unnecessary to rule whether the transfer in this case also evidences bad faith.