World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Deutsche Telekom AG v. Domain Management

Case No. D2011-0924

1. The Parties

The Complainant is Deutsche Telekom AG of Bonn, Germany represented by Hogan Lovells International LLP, Germany.

The Respondent is Domain Management, United States of America and Syed Hussain, United States of America.

2. The Domain Names and Registrar

The disputed domain names <tsystems-mms.com> and <tsystemsmms.com> are registered with Tucows Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 27, 2011. On May 27, 2011, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain names. On May 27, 2011, Tucows 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” 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 June 7, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 27, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 29, 2011.

The Center appointed Francine Tan as the sole panelist in this matter on July 6, 2011. 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 one of the largest telecommunications companies in Europe and one of the world's leading telecommunications and information technology service companies. In the United States, the Complainant is represented by T-Systems North America Inc. The Complainant provided evidence of its ownership of the trade mark T-SYSTEMS in, inter alia, the United States, the European Community and Germany. The various trademark registrations cover goods and services in Classes 9, 16, 25, 28, 35, 36, 37, 38 39, 41 and 42. The trademark registrations date from the year 2000.

The Complainant also owns, amongst others, the domain names <t-systems-mms.com> and <t-systems.com>. The domain name <t-systems-mms.com> is used by the Complainant in relation to its subsidiary, T-Systems Multimedia Solutions GmbH (“T-Systems Multimedia”), which offers technology independent web-innovations for e-Commerce, intranet and internet solutions.

5. Parties’ Contentions

A. Complainant

The Complainant asserts, firstly, that the disputed domain names are confusingly similar to its trade mark, T-SYSTEMS:

The disputed domain names <tsystems-mms.com> and <tsystemsmms.com> contain the Complainant’s T-SYSTEMS mark, and the only differences are in the omission of the hyphen between the letter “T” and the word “System”, and in the capitalization of the letters. The Complainant submits, with reference to earlier panel decisions under the Policy, that these differences are of no consequence. The fact that the disputed domain names incorporate the Complainant’s trade mark is sufficient to establish that the disputed domain names are confusingly similar to the Complainant’s registered trade mark.

The Complainant submits that the term “mms” is commonly used in the IT and telecommunications sector as an abbreviation for “multimedia messaging service” or “multimedia solutions”. The public would therefore interpret “mms” as a pure description of the domain’s content. The addition of a generic term also does not prevent the disputed domain names from being confusingly similar to the Complainant's trade mark. Due to the reputation of the trade mark T-SYSTEMS, the term “tsystems” would be considered by the public as the dominant component of the disputed domain names, while the letters “mms” would be considered merely as a descriptive addition. The latter should therefore be disregarded in the assessment of likelihood of confusion.

Moreover, the public would expect to find at the disputed domain names the official website of the Complainant with information on multimedia solutions offered by its subsidiary, T-Systems Multimedia. As the Complainant is using the domain name <t-systems-mms.com> for the internet presence of its subsidiary, T-Systems Multimedia, the addition of the term “mms” in the disputed domain names increases the likelihood of confusion with the Complainant’s T-SYSTEMS trade mark and its domain name <t-systems-mms.com>.

Secondly, the Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain names:

The disputed domain names were, at the time of filing of the Complainant, used in relation to a website with an advertisement for the web hosting services of the registrar, Netfirms, Inc. Consequently, there is no evidence that the Respondent has a legitimate interest in respect of the disputed domain names. None of the circumstances listed under paragraph 4(c) of the Policy are applicable in this case: (i) there is no indication that the Respondent is using the disputed domain names for a bona fide offering of goods or services; (ii) there is no indication that the Respondent was commonly known before by the disputed domain names; (iii) there is no indication that the Respondent is making a legitimate non commercial or fair use of the disputed domain names; and (iv) 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-SYSTEMS mark.

The Complainant submits that it is only required to establish a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain names, which burden has been satisfied.

Lastly, the Complainant submits that the disputed domain names were registered and used in bad faith and this is supported by the following facts:

(a) In March 2011, the Complainant discovered that the disputed domain names had been registered by the Respondent and the purpose for which they were being used. A cease and desist letter of March 15, 2011 was sent to the Respondent by email, with a request for the immediate cancellation of the disputed domain names. The Respondent replied on the same day with an offer to sell the disputed domain names for USD 1,250. On March 16, 2011, the Complainant’s representatives replied to the Respondent and informed the latter that the Complainant was not ready to pay any compensation for the discontinuation of the trademark infringement, and again requested the immediate cancellation of the disputed domain names. On March 17, 2011, the Respondent replied by email with an offer to lower the price to USD 1,000. The Complainant did not accept this offer on the basis that this amount exceeded the Respondent’s out-of-pocket-costs for the disputed domain names by a significant amount.

(b) The Complainant’s trade mark T-SYSTEMS had already been registered and used for many years by the time of the registration of the disputed domain names on December 5, 2010. It is not conceivable that the Respondent did not know of the Complainant’s T-SYSTEM trade mark when registering the disputed domain names. Furthermore, considering that the disputed domain names are almost identical to the Complainant’s domain name <t-systems-mms.com>, it is obvious that the Respondent registered the disputed domain names in order to create a likelihood of confusion with the Complainant’s trade mark and thus to profit from its reputation.

(c) Earlier panel decisions (e.g. in PepsiCo, Inc. v. Paul J. Swider, WIPO Case No. D2002-0561 and Deutsche Telekom AG v. Britt Cordon, WIPO Case No. D2004-0487) have held that the registration, without authorization of a domain name that is identical to a complainant’s famous mark is, in and of itself evidence of bad faith, and that the knowledge of marks at the time of registration of the domain name suggests bad faith.

(d) According to paragraph 4(b)(iv) of the Policy, it shall be evidence of bad faith registration and use if by using the domain name the respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other online location, by creating a likelihood of confusion with the complainant's mark. The fact that the Respondent had knowledge of the Complainant’s trade mark when acquiring and using the disputed domain names shows that the Respondent was seeking to take advantage of the fact that Internet users looking for information about the Complainant’s subsidiary, T-Systems Multimedia, would be led to the Respondent’s website.

(e) The Respondent’s refusal to cancel the disputed domain name registrations or to transfer them to the Complainant without significant financial compensation, as well as failure to provide any evidence whatsoever of any actual or contemplated good faith use of the disputed domain names constitute bad faith registration and use. (Paragraph 4(b)(i) of the Policy.) The fact that the Respondent repeatedly tried to sell the disputed domain names to the Complainant shows that his primary purpose was to gain a financial advantage out of the domain name registrations.

(f) The Respondent and its associated entities are holders of over 4,000 domain names, many of which seem to infringe on the intellectual property rights of third parties. The Respondent and its related entities appear to have a long history of having engaged in abusive registrations. The related entities, in particular MIC or CPIC Net, were found to be associated with Syed Hussain in these cases:

- Carrefour and Carrefour Property v. MIC Domain Management ( WIPO Case No. D2009-0489);

- L’Air Liquide v. MIC ( WIPO Case No. D2001-1246);

- Telstra Corporation Limited v. MIC and Syed Hussain ( WIPO Case No. D2002-0126);

- Compagnie Gervais Danone v. Domain Management, Syed Hussain ( WIPO Case No. D2008-1239)

The Complainant identified the following cases in which abusive registrations by the Respondent and/or the above-mentioned related entities were found:

- United States Olympic Committee v. MIC ( WIPO Case No. D2000-0189);

- Time Warner Inc. and EMI Group plc v. CPIC Net ( WIPO Case No. D2000-0433);

- Bates Worldwide, Inc. v. MIC (Syed Hussain) ( WIPO Case No. D2000-1168);

- Unión Eléctrica Fenosa v. Syed Hussain ( WIPO Case No. D2000-0893);

- Red Hat, Inc. v. Syed Hussain, d/b/a CPIC Net and MIC ( WIPO Case No. D2000-1442);

- The London Metal Exchange Limited v. Syed Hussain ( WIPO Case No. D2000-1388);

- ProSieben Media AG v. CPIC Net Syed Hussain ( WIPO Case No. D2000-1517);

- Britannic Assurance PLC v. MIC ( WIPO Case No. D2000-1516);

- The Body Shop International PLC v. CPIC NET and Syed Hussain ( WIPO Case No. D2000-1214);

- Clifford Chance LLP and Pünder GmbH v. CPIC Inc. ( WIPO Case No. D2000-1603);

- Gruner + Jahr Printing & Publishing Co., G + J McCall’s LLC, Rosie O’Donnell and Lucky Charms Entertainment, Inc. v. CPIC NET ( WIPO Case No. D2000-1742);

- Logica plc and Logica UK Limited v. CPIC Net ( WIPO Case No. D2000-1566);

- General Electric Company v. CPIC NET and Hussain Syed ( WIPO Case No. D2001-0087); and

- Tata Tea Limited v. CPIC NET ( WIPO Case No. D2000-1828).

Reference was made by the Complainant to the case of In Compagnie Gervais Danone v. Domain Management, Syed Hussain, WIPO Case No. D2008-1239, in which the panelist remarked that other panels have been highly critical of Mr. Hussain's behaviour and made adverse comments as to Mr. Hussain's honesty. For example, in Tata Sons Limited v. Tatasky International Corporation, WIPO Case No. D2005-0783, the panel accepted the claims of the complainant that Mr. Hussain had registered the domain name in a fictitious name ‘in order to bring in some guise of legitimacy/justification for having registered/acquired the domain name, having realized administrative proceedings had been initiated against him’. The Panel also suspects ‘that these cases are the tip of the iceberg so far as Mr. Hussain's cybersquatting activities are concerned’.” Reference was also made to another case where the panel also found evidence that the “Respondent has been engaged in the abusive registration and use of domain names which incorporate registered trademarks for the purposes of selling them” (Carrefour and Carrefour Property v. MIC Domain Management, WIPO Case No. D2009-0489).

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Complainant must prove that each of the conditions specified in paragraph 4(a) of the Policy are satisfied, i.e. that:

(i) the disputed domain name are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain name have been registered, and are being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has shown that it has rights in the trade mark T-SYSTEMS. The Panel further finds that the disputed domain names are confusingly similar to the Complainant’s trade mark. It agrees that the dominant elements of the Complainant’s trade mark and of the disputed domain names consist of the letter and word “T-systems”. The Panel finds that the addition of the letters “mms” and the hyphenation which appears in the first of the disputed domain names do not serve to distinguish the disputed domain names from the Complainant’s trade mark, and agrees that in the context of this case, it is reasonable for the letters “mms” to be construed to signify the term “multimedia messaging services”. It is a well-established principle that the addition of a generic or descriptive word in a domain name which incorporates another party’s trade mark would be insufficient to remove confusing similarity with the trade mark.

Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent could have refuted the Complainant’s case and sought to establish any of the elements under paragraph 4(c) of the Policy with evidence but failed to, from which the Panel draws a negative inference. Further, the Panel notes that when the Complainant, through its authorized representatives, sent the cease and desist letter to the Respondent, the latter did not claim to be unaware of the Complainant’s rights in the mark T-SYSTEMS. Instead, it very quickly responded with offers to sell the disputed domain names.

The Panel concludes, in the circumstances, that the Respondent has no rights or legitimate interests in respect of the disputed domain names, and finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds there is overwhelming evidence that registration and use of the disputed domain names were made in bad faith. There are without doubt circumstances indicating that the Respondent registered or acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the Complainant who is the owner of the trademark for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain names. The facts also indicate that the Respondent has, by use of the disputed domain names, intentionally attempted to attract for commercial gain, Internet users to his web site 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 his web site or location (paragraph 4(b)(i) and (iv) of the Policy).

Secondly, the Panel has taken into consideration the other surrounding circumstances presented in evidence and which have not been refuted by the Respondent, which indicate that the Respondent is engaged in the “business of cybersquatting”.

The Panel therefore finds that the disputed domain names were registered and are being used in bad faith. The Complainant has satisfied the requirement under paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <tsystems-mms.com> and <tsystemsmms.com> be transferred to the Complainant.

Francine Tan
Sole Panelist
Dated: July 11, 2011

 

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