The Complainants are Deutsche Telekom AG, with its registered office at Bonn, Germany and T-Mobile Netherlands B.V., with its registered office at The Hague, the Netherlands (“Complainants”), represented by Lovells LLP, the Netherlands.
The Respondent is an individual, named A. Coppola (“Respondent”), with its address at Stege, Denmark.
The disputed domain name <tmobilr.nl> (the “Domain Name”) is registered with SIDN via Netbeat GmbH.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2008 (e-mail) and November 4, 2008 (hardcopy). On November 3, 2008 the Center transmitted by e-mail to SIDN a request for registration verification in connection with the Domain Name. On November 4, 2008, SIDN transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. Complainant filed the Complaint in English. Respondent did not reply to the English Complaint. In accordance with article 16 of the Regulations, the Center provisionally decided that the Complaint would be accepted in the English language as the Respondent is located outside the Netherlands and Complainants filed the Complaint in English. The Center verified that the Complaint satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).
In accordance with the Regulations, articles 5.1 and 15.5, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 7, 2008. In accordance with the Regulations, article 7.1, the due date for Response was November 27, 2008. The Respondent did not submit a Response. Accordingly, the Center notified the Respondent's default on November 28, 2008.
The Center appointed Willem J.H. Leppink as the panelist in this matter on December 2, 2008. The Panelist finds that the Panelist was properly appointed. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 8.2.
As mentioned above, Complainants filed the Complaint in the English language. Respondent did not respond to this Complaint. As Respondent is established in Denmark and it is likely that it will not be acquainted with the Dutch language, the Panelist agrees with the Center to accept the Complaint in English. Although the Dutch language in principle is the language for procedures under the Regulations, the Panelist determines that the language of this procedure shall be English, so as to help Respondent, which is probably not acquainted with the Dutch language, to understand the procedure and this decision.
Deutsche Telekom, the group of companies Complainants belong to, is one of the world's leading groups of companies offering telecommunications services and products. Deutsche Telekom has presence in around fifty countries all across the world, including the Benelux, and offers its broad range of telecom solutions to private and business customers. Complainants use the trade marks T-MOBILE which are considered famous in the European Union. T-Mobile Netherlands B.V. owns the trade name rights in the Netherlands with respect to the name T-Mobile.
Respondent is an individual who uses the Domain Name. According to the publicly available WhoIs information of SIDN the Domain Name was registered on August 18, 2007.
Complainants have claimed to hold rights in the following trade mark registrations which would be valid in the Benelux:
- CTM registration number 485441 for the word mark T-MOBILE, filed on February 26, 1997;
- International registration number 680034 for the word mark T-MOBILE, filed on February 26, 1997;
- CTM registration number 4588241 for the word mark T-MOBILE, filed on August 11, 2005; and
- Benelux registration number 704659 for the device mark T MOBILE, filed on September 12, 2000.
Complainants have submitted copies of these registrations.
Furthermore, Complainants have stated that the T-MOBILE trade marks are very famous and widely known. In any event they have a reputation in the European Union in the sense of article 9 paragraph 1 under (c) of the Community Trade Mark Regulation (CTMR) as well as in the Benelux countries in the sense of article 2.20 paragraph 1 under (c) of the Benelux Convention on Intellectual Property (trademarks and designs); (BCIP).
Subsequently, Complainants have stated that T-Mobile Netherlands B.V. owns trade name rights in the Netherlands with respect to the name T-Mobile, since 2003. Complainants have submitted a copy of the extract from the Dutch Trade Registry of the Chamber of Commerce. In the Benelux Complainants operate amongst other things via a website under the domain names <tmobile.nl> and <t-mobile.nl>. This can be derived from the extracts from the websites under these domain names, which Complainants have submitted.
Complainants have argued that in this case Respondent's conduct is to be considered as ‘typo-squatting'. The Domain Name is obviously deducted from the well-known trade mark and trade name T-MOBILE. The sign “tmobilr” can be considered as a typo of the trade mark T-MOBILE. The characters that constitute this designation are identical to the characters that constitute the trade mark T-MOBILE. Only the characters “e” and “r” have been swapped, which is a mistake people commonly make, since the “r” is next to the “e” on a “qwerty” keyboard.
Complainants have referred to several WIPO cases in which the panel decided that slight changes in a word may be purposeful misspellings, “designed to take advantage of mistakes that consumers are likely to make when intending to enter Complainants' website address”, see InfoSpace.com, Inc. v. Registrar Administrator Lew Blanck, WIPO Case No. D2000-0069. An Internet user intending to visit the Complainants' official website (located at “www.tmobile.nl”) could quite easily miss-type “tmobile”, and end up at Respondent's website.
Complainants have alleged that the Domain Name is confusingly similar to Complainants' prior trade marks and trade name rights with respect to T-MOBILE. The Domain Name is being used to offer and/or advertise identical goods and services causing a likelihood of confusion amongst the relevant public. The likelihood of confusion is further strengthened by the fact that the T-MOBILE trade marks and the trade name have a strong reputation in the Benelux.
In this respect Complainants have stated that Respondent, by using the Domain Name, infringes upon of the Complainants' prior T-MOBILE trade marks and trade name rights.
Complainants have stated that Respondent does not appear to be known by the name “tmobilr” or anything similar, and does not appear to have applied for any trade mark or trade name rights in this term. Subsequently, Complainants have alleged that they have not licensed or consented the use by Respondent of their trade marks and trade name rights in the name T-MOBILE.
In addition, Complainants have argued that Respondent is not making a legitimate use of the Domain Name. Respondent misleadingly diverts consumers and damages the trade marks and trade name of Complainants. Respondent does not appear to be making a bona fide offering of goods or services from his website. The homepage of his website under the Domain Name currently provides a range of links to several websites for telecom products. It also provides a range of links under a broad subject heading, such as “Adult”, “Sports”, “Shopping” and “Music”. When some of these links are followed by an Internet user, he or she can be led to goods and services which directly compete with Complainants' goods and services. Such use should be considered to be commercial. Therefore, Respondent is clearly making a commercial use of the website and Complainants infer that Respondent is also receiving a commercial profit from the sponsored links displayed on Respondent's website.
Complainants have also stated that they infer that Respondent chose a purposeful misspelling of Complainants' trade mark, trade name and domain name, to redirect Internet users to his own website. Such use cannot constitute a bona fide offering of goods or services, or a non commercial or fair use and is therefore inconsistent with any claims or legitimate interests. With respect to the foregoing, Complainants refer to two WIPO Cases (The Coryn Group, Inc , Apple Vacations West, Inc. v. V.S. International, WIPO Case No. D2003-0664 and Sony Corporation v. John Stewart Last, Dragon Domains Limited, WIPO Case No. D2008-0812).
Complainants have argued that this is a clear case of “typo-squatting”. It is generally held that typo-squatting per se is sufficient to establish registration and use in bad faith. In this respect, Complainants refer to two WIPO Cases (SurePayroll, Inc. v. Web Advertising, Corp., WIPO Case No. D2007-0470 and F. Hoffmann-La Roche AG v. Samir Kumar, WIPO Case No. D2008-0808).
In addition, Complainants have also stated that the scenario of article 3.2 sub c of the Regulations applies, because the Domain Name has been registered primarily for the purpose of disrupting Complainants' activities. In WIPO Case No. D2008-0812 it has been decided that there are three elements that must all be satisfied, being that: (a) the respondent knew of complainant's business, (b) the “primary purpose” of respondent's registration was to disrupt the complainant's business and (c) respondent and complainant are competitors.
With respect to elements a and b, Complainants have alleged that given the fame and reputation of the T-MOBILE trade marks and trade name and the fact that its goods and services are distributed throughout the world, Respondent must have known of Complainants' business as (i) Complainants' business is well-known, (ii) Respondent has not registered the Domain Name for a legitimate purpose and (iii) the nature of the links contained on Respondent's website indicates that Respondent was aware of Complainants' business, and by offering goods and services similar to those of Complainants', Respondent had a clear intention of diverting business from Complainants to Respondent. With respect to element c, Complainants have argued that Respondent is a competitor of Complainants. Complainants refer to GB Investments, Inc. v. Donald Baker, WIPO Case No. D2007-1320.
Complainants have also stated that the scenario of article 3.2 sub d of the Regulations (the Domain Name is being used for commercial gain, by attracting Internet users to a website of respondent through the likelihood of confusion which may arise with a well-known trade mark) has been met, as Respondent chose a purposeful misspelling of Complainants' trade marks, trade names and domain names, in order to create confusion among Internet users and redirect them to Respondent's own website. This is because typing “tmobilr” instead of “tmobile” is a mistake people may commonly make, since the “r” is next to the “e” on a “qwerty” keyboard.
Furthermore, Complainants deem it very likely that Respondent knew of Complainants' trade marks and trade name, recognized the popularity of the trade marks and knew that Complainants promote their business via a website. Respondent then registered the Domain Name which was likely to be confused with Complainants' trade marks, trade name and own domain names. Respondent is clearly making a commercial gain from the website linked to the Domain Name, by providing links to goods and services. The fact that these goods and services clearly relate to Complainants' business, and lead to websites that provide goods and services which compete with Complainants' business, is further evidence of bad faith. Moreover, Complainants infer that Respondent registered and uses the disputed Domain Name in bad faith, relying on one misspelling which internet users are likely to make, in order to trade off the popularity of the T-MOBILE trade marks and trade name of Complainants for commercial gain.
The Respondent did not reply to the Complainant's contentions.
Article 7.4 of the Regulations provides that, in the event that a respondent fails to submit a response, the complaint shall be granted, unless the Panelist considers it to be without basis in law or fact.
According to article 2.1 of the Regulations, the requested remedy shall be granted if a complainant asserts and establishes each of the following:
a. that the domain name is identical or confusingly similar to
I. a trade mark, or trade name, protected under Dutch law in which the complainant has rights;
II. a personal name registered in a Dutch municipal register of persons (‘gemeentelijke basisadministratie'), or a name of a Dutch public legal entity or a name of an association or foundation located in the Netherlands under which the complainant undertakes public activities on a permanent basis; and
b. that respondent has no rights or legitimate interests in the domain name; and
c. that the domain name has been registered or is being used in bad faith.
Complainants indicate in the Complaint that they rely on their trade mark registrations and the Dutch trade name rights. The submitted copies of the trade mark registrations and evidence regarding trade name use, substantiate Complainants' rights to the T-MOBILE trade marks and trade name.
The Domain Name is nearly identical to Complainants' trade marks and trade name. The swapping of the characters “e” and “r” does not make any relevant difference. Therefore the Panelist finds that the Domain Name is confusingly similar to Complainants trade marks and trade name.
The Panelist finds that Complainants have complied with article 2.1 sub a of the Regulations.
According to article 2.1 sub b of the Regulations a complainant must demonstrate that the respondent has no rights or legitimate interests in the domain name. This condition is met if a complainant makes a prima facie case that respondent has no rights or legitimate interests and the respondent fails to rebut that showing by providing evidence of for example any of the three circumstances mentioned in article 3.1 of the Regulations.
Complainants have established that there are no indications that Respondent has rights to or legitimate interests in the Domain Name as Respondent is not commonly known by the name “tmobilr” or a similar name and has not applied for any trade mark or trade name rights in this term. Moreover, Complainants have not licensed or consented the use of the T-MOBILE trade marks and trade name rights by Respondent.
Furthermore, Complainants have put forward that there are no indications that, before having notice of the dispute, Respondent made legitimate use of the Domain Name. On the contrary, Respondent redirects Internet users, by the misspelling of the trade mark, trade name or domain name of Complainants, to its own website. On this website there are a range of links to several other websites for telecom products. Other links on the website of Respondent lead to goods and services which directly compete with Complainants' goods and services. Such use cannot constitute a bona fide offering of goods and services, or a non commercial or fair use of the Domain Name.
Respondent has not disputed Complainants' assertions, nor has the Panelist found any indications that would suggest that Respondent (a) before having notice of the dispute, made demonstrable preparations to use the Domain Name in connection with the bona fide offering of goods and services, (b) is commonly known by the Domain Name, or (c) is making a legitimate non-commercial use of the Domain Name.
For these reasons, the Panelist finds that Complainants have satisfied article 2.1 sub b of the Regulations.
Pursuant to article 2.1 sub c of the Regulations, a complainant must demonstrate that the domain name has been registered or is being used in bad faith.
Complainants have indicated that this is a clear case of so called “typo-squatting”. In SurePayroll, Inc. v. Web Advertising, Corp., WIPO Case No. D2007-0470 and F. Hoffmann-La Roche AG v. Samir Kumar, WIPO Case No. D2008-0808 it was held that typo-squatting per se is sufficient to establish registration and use in bad faith. As the characters “r” and “e” are side to side on the keyboard, the Panelist finds that Respondent was aware of this and therefore Respondent is engaged in typo-squatting, with the result that the Domain Name has been registered and is being used in bad faith.
Complainants have subsequently stated, in accordance with article 3.2 sub c and d of the Regulations, circumstances which suggest that the Domain Name has been registered or is being used in bad faith. Regarding article 3.2 sub c of the Regulations, Respondent disrupts Complainants' activities as Respondent uses the Domain Name and offers similar goods and services as Complainants. Moreover, the nature of the links on its website indicates that Respondent was aware of the business of Complainants, as their business is well-known.
With respect to article 3.2 sub d of the Regulations the Domain Name is being used for commercial gain as Respondent has the intention to mislead the Internet users as they may be easily directed to the corresponding website in the event they misspell the domain name <tmobile.nl> into <tmobilr.nl>, which is a mistake people may often make, since the “r” is next to the “e” on a “qwerty” keyboard. The content of the website of Respondent contains several links to other telecom products. These goods and services relate clearly to Complainants' business and therefore compete with Complainants' business.
Given the fact that Respondent has not submitted a Response and thus not rebutted Complainants' contentions, the Panelist, on the basis of the evidence submitted by Complainants and the argumentation of Complainants, is satisfied that the Domain Name has been registered or is being used in bad faith.
The Panelist thus finds that Complainants have satisfied article 2.1 sub c of the Regulations.
For all the foregoing reasons, in accordance with articles 1 and 13 of the Regulations, the Panelist orders that the Domain Name <tmobilr.nl> be transferred to Deutsche Telekom AG.
Willem J.H. Leppink
Dated: December 29, 2008