WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Deutsche Telekom AG. v. Vision Computer S.L.
Case No. D2002-0824
1. The Parties
The Complainant is Deutsche Telekom AG, a German corporation with principal place of business at Friedrich-Ebert-Allee 140, 53113 Bonn, Germany, represented in this proceeding by Dr. Matthias Koch, of Lovells, Marstallstrasse 8, 80539 Munich, Germany.
The Respondent is Vision Computer S.L., a Spanish limited liability company, with seat at Viladomat 134, Bajos 2a, 08015 Barcelona, Spain, represented in this proceeding by Ms. Elena Sellart, with same address.
2. The Domain Names and Registrars
The domain names at issue are:
<t-moviles.com> and <tmoviles.com>, both registered with Melbourne IT, of Level 2, 120 King Street, Melbourne, Victoria 3000, Australia, and
<t-movil.com>, registered with Network Solutions, Inc. of 21355 Ridgetop Circle, Dulles, VA 20166, USA.
3. Procedural History
3.1. On September 2 and 6, 2002, the complaint was submitted per e-mail and hardcopy, respectively. On September 4, 2002, the Center acknowledged receipt of the complaint, and requested confirmation of registration data to the concerned registrars. On September 5, 2002, Melbourne IT d/b/a Internet Name Worldwide and Network Solutions, Inc. replied to the Centerís request. On September 10, 2002, the Center notified the complaint and the commencement of the proceeding to the Respondent. On September 30, 2002, Respondent sent its amended response to the Center. On October 6, 2002, after receiving the corresponding Statement of Acceptance and Declaration of Impartiality and Independence the Center appointed Roberto A. Bianchi as sole panelist. The projected decision date was due on October 23, 2002. Because the time period required for the compliance of Procedural Order No. 2 expired one day after the deadline, this decision is being sent to the Center on October 24, 2002.
3.2. When the Administrative Panel received the hardcopy of the case file it noticed that Annex "K" of Respondentís amended Response of September 30, 2002, consisted of just one page (notary public page 4G6018603), titled "Acta de Presencia" of May 8, 2002, deed protocol number 2116, while in its Response Respondent stated that "(...) it called on the offices of Mullerat accompanied by the Notary of Barcelona, Mr. Josep Maria Valls Sufre, with the contracts signed and sealed to demand their contractual fulfillment and be able to prove consequently a posteriori, in this manner, the bad faith by Deutsche Telekom AG. The Notary by deed protocol number 2116, made an official report of the breach of contract of Deutsche Telekom AG, bad faith being demonstrated as they expected the Respondent not to respond to the legal procedure WIPO Case No. D2001-1240, and awaited the time of response to the legal procedure to elapse". On October 22, 2002, the Panel issued Procedural Order No. 1 where Respondent was requested to send by facsimile the full copy of the Notary Publicís deed, or else confirm that the one page above referred was the full text of Annex "K". On October 24, 2002, Respondent complied with Procedural Order No. 1 by scanning the requested documents, and attaching them to an e-mail where Respondent also made some un-requested statements. On the same day Complainant requested permission from the Panel to submit comment on Respondentís last statements. On the same day the Panel issued Procedural Order No. 2, deciding that Respondentís un-requested statements shall not be considered, and that Complainantís request shall not be allowed.
3.3. The language of the registration agreements is English. Both the complaint and the response are in English, which shall be the language of the proceedings.
4. Factual Background
The following facts and circumstances are found to be true, because they have been proved by documentary evidence, or because the parties have not contested them:
4.1. Complainant is one of the largest telephone companies in Europe. It covers the entire spectrum of modern telecommunications. "T-Mobile" is the corporate name under which the Complainantís business in the mobile communications sector is conducted in Germany as well as in the USA, Austria, Czech Republic, The Netherlands, Poland, Russia and the United Kingdom.
4.2. Until the year 2001 the Complainant's mobile communication division used the corporate name "T-Mobil" (without "e").
4.3. Complainant owns the German trademark "T-Mobil" (without "e") with registration no. DE39550620, registered on January 9, 1996, for the following goods and services: Class 09: Electrical, electronic, optical, measuring, signaling, controlling or teaching apparatus and instruments (included in this class); apparatus for recording, transmission, processing and reproduction of sound, images or data; machine run data carriers; automatic vending machines and mechanisms for coin operated apparatus; data processing equipment and computers. Class 37: Services for construction; installation, maintenance and repair of equipment for telecommunication. Class 38: Telecommunication services; rental of equipment for telecommunication. Class 41: Instruction and entertainment services; organization of sporting and cultural events; publication and issuing of printed matter. Class 42: Computer programming services; data base services, especially rental of access time to and operation of a database; rental services relating to data processing equipment and computers; projecting and planning services relating to equipment for telecommunication. The international trademark registration "T-Mobil" (without "e") no. 660483, which is protected in numerous countries, was based on this German trademark. According to the ROMARIN database No. 6/2002 submitted by Complainant (Annex "F", page 5), the T-Mobil international mark was accepted in Spain for all goods and services in classes 9, 14, 16 and 36, and refused for all goods and services in classes 18, 25, 28, 37, 38, 41 and 42.
4.4. Complainant also owns the German trademark "T-Mobile", with registration no. DE39638168, registered on October 8, 1996, for the same classes, and for same or similar goods and services as trademark DE39550620 (see 4.3.). The international trademark registration "T-Mobile" no. 680034, which is protected in numerous countries, was based on this German trademark. According to the ROMARIN database No. 6/2002 submitted by Complainant (Annex "D", page 5), the T-Mobile international mark was accepted in Spain for all goods and services in classes 14, 16, 18, 25, 28, 36 and refused for all those in classes 9, 37, 38, 41 and 42.
4.5. Complainant has registered and is using the following domain names: <t-mobile.com>, <t-mobile.net>, <t-mobile.org>; <t-mobiles.com>, <t-mobiles.net>, <t-mobiles.org>; <t-mobil.com>, <t-mobil.net>, <t-mobil.org>.
4.6. On February 2, 2000, Respondent registered the domain name <t-movil.com>. On December 7, 2000, it registered the domain names <t-moviles.com> and <tmoviles.com>.
4.7. Respondent is a limited liability company established in Barcelona in 1993. It is a provider of IT goods and services. It sells, installs and repairs any type of electronic material, including phones. It provides telephone connection services, fax and mail services, routers, etc., and maintains and repairs equipment for telecommunications, etc.
4.8. The Parties to this proceeding were the parties in WIPO Case No. D2001-1240, Deutsche Telekom AG (complainant) v. Vision Computer S.L. (respondent), relating the <t-mobiles.com> and <tmobiles.com> domain names. The sole panelist Prof. Dessemontet found in his decision of April 26, 2002, that both domain names were confusingly similar to the corresponding trademarks of Complainant, that Respondent lacked rights or legitimate interests in the domain names, and that it had registered and was using them in bad faith. The Panel required both domain names to be transferred to Deutsche Telekom. In the "Procedural History" of WIPO Case No. D2001-1240, at section 3, it is stated that the notification of complaint was transmitted on November 27, 2001, and the notification of Respondent default on November 27, 2001. On December 4, 2001, the Center received Complainantís request for suspension of proceedings. The Center granted the suspension of proceedings on January 29, 2002, and extended the suspension of proceedings on February 27, 2002. On March 27, 2002, the recommencement of proceedings took place. The file was transmitted to the panelist on April 23, 2002. Prof. Dessemontetís decision is dated April 26, 2002.
4.9. The Parties appear to have been engaged in a negotiation to transfer the domain names from Respondent to Complainant for an amount of money. This negotiation was interrupted.
5. Partiesí Contentions
Complainant contends the following:
The domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Respondent is not, and never has been, representative or licensee of the Complainant, nor is the Respondent otherwise authorized to use the Complainantís trademarks. He is also not commonly known under t-moviles, tmoviles or t-movil. Until now, he does not use the domain names in connection with a bona fide offering of goods and services, and he is also not making a legitimate noncommercial or fair use of the domain names. Given the fame and reputation of the Complainantís marks "T-Mobil" and "T-Mobile" it is evident that the disputed domain names were registered with this trademarks in mind. Since the registration of the domain names in 2000 they have not been used in any legitimate way, but only to display a standard website of the Respondentís original registrar NameSecure, or for a direct transfer to the respondent's website. This prevents the Complainant from registering the Disputed Domain Names. Before and after the decision in case WIPO Case No. D2001-1240 the Complainant's authorized representative and the Respondent had several negotiations regarding the remaining domain names <t-moviles.com>, <tmoviles.com>, and <t-movil.com> (the Respondent had informed the Complainant at some stage that this domain names was for sale as well). Deutsche Telekom was willing to pay a total price of US$ 3.000 for these three domain names, while the Respondent asked for a total price of US$ 4.500. After several negotiations without an acceptable agreement the Complainant decided to initiate this proceeding for the remaining three domain names. On July 20, 2001, the Complainant's authorized representative obtained a list, from the Network Solutions' "whois" database at "www.networksolutions.com", of 50 domain names, which the Respondent had registered at that time. A significant number of these domain names were identical or confusingly similar with famous Spanish and international trademarks, which have nothing to do with the Respondentís business. Having inserted the respective domain name URLs as web addresses, the web browser displayed a standard website of the Respondent's registrar stating that the website was "under construction". Among others, the Respondent had registered: <iberia-online.com> and <iberia-online.net> (IBERIA is a famous Spanish Airline), <dhlonline.net> (DHL is one of the most important courier services), <terrabusiness.com> (TERRA is the biggest Spanish Internet portal site), <menta-online.net> (MENTA is a famous Spanish Internet Portal), "guipuzcoana-online.net" (Guipuzcoana is a well-known Spanish transport company). The Complainant had explicitly mentioned these domain names in its previous complaint regarding the domain names <t-mobiles.com> and <tmobiles.com>. Respondent has now deleted the domain name registrations described above in order to destroy the traces of the Respondent's cybersquatting activities.
Respondent contends that the domain names at issue are not identical or confusingly similar to trademarks in which Complainant has rights. Respondent, as it has offices in Spain, used the Spanish words movil and moviles. "T" is an abbreviation for "teléfono" and "telefonía". Complainant never registered the T-MOVIL, T-MOVILES or TMOVILES marks. As of year 2000 nobody knew the T-MOBIL or T-MOBILE division of Complainant. The T-MOBILE or T-MOBIL marks are unknown in Spain. T-MOBIL.com is active and has been developed for various countries, but not in Spain. Nor have the T-MOVIL, TMOVILES or T-MOVILES marks been registered in Spain. Respondent registered the domain names at issue for the development of his activity, in view to encourage the visit to its website "www.vision-computer.com", where Respondent offers sale and repair of electronic material, and equipment and services for telecommunications.
Respondent is forwarding the "t-movil.com" website, and has forwarded the "tmoviles.com" and "t-moviles.com" websites, to its own website. This is a legitimate and fair use of the domain names, and a bona fide offering of goods and services is also demonstrated.
Respondent denies that it has ever had the idea of registering the domain names to offer them for sale to Complainant. It was Complainant who showed interest for the domain names. Respondent denies that it was not interested in legal disputes, and that it would be willing to sell the domain names for pesetas 1,000,000. Respondent never called Mr. Renck to offer the domain names. It was Complainant who in March 2001, and on April 19 sent draft agreements to transfer the domain names. That is the reason for Respondent having not appealed "to the WIPO under legal procedure number D2001-1240 (sic)". It is true that Respondent was ready to transfer the <t-mobiles.com>, <tmobiles.com>, <t-moviles.com>, <tmoviles.com> and <tmovil.com> domain names for EUR 6,000, but the initial offer was made by Mr. Renck.
6. Discussion and Findings
6.1. Identity or Confusing Similarity
Complainant has evidenced that it holds registrations for the "T-MOBIL" (without "e") trademark DE39550620, since January 9, 1996, and for the T-MOBILE" (with "e") trademark DE39638168, since October 8, 1996. The domain names at issue were registered on February 2, and December 7, 2000. The Panel finds that all three domain names are confusingly similar to Complainantís marks T-MOBILE or T-MOBIL. The fact that the letter "V" - instead of "B"- is used in the domain names does not detract from a finding of confusing similarity, because the difference is limited to just one letter in 6-letter and 8-letter second level domain names. Furthermore the sound of "V" is very close to the sound of "B". "V" is used in Spanish, while "B" is used in Catalan (as well as in other languages). The addition of the final "S" in <t-moviles.com> and <tmoviles.com> indicates plural forms, and does not suffice to distinguish the domain names from the trademarks. See WIPO Case No. D2001-1240 at section 5.a. finding the adding of the single letter "s" in the domain name <t-mobiles.com>, the plural ending of Complainantís trademark T-MOBILE, to be no distinctive feature. The suppression (or addition) of a hyphen is also irrelevant. Nor can the addition of the gTLD ".com" in the domain names be relevant. See WIPO Case No. D2000-0075 InfoSpace.com, Inc. v. Tenenbaum Ofer, April 27, 2000, finding that "(t)he addition of a hyphen and ".com" are not distinguishing features". The T-Mobil international mark No. 680034 was accepted in Spain for all goods and services in classes in classes 14, 16, 36 and 9. See 4.3. supra. Class 9 covers inter alia "apparatus for recording, transmission, processing and reproduction of sounds, images or data", such as mobile phones. In sum, Complainant has proved the requirement of UDRP, Paragraph 4(a)(i) in respect of the domain names at issue.
6.2. Lack of Rights or Legitimate Interests
Under UDRP, Paragraph 4 (c)(iii) a respondent proving that it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the mark at issue, will make out his case that it has rights or legitimate rights in the domain name.
Respondent contends that "movil" and "moviles" are generic terms, and that the letter "T" in the domain names at issue stands for "teléfono" (Spanish for "telephone") and "telefonía" (Spanish for "telephony"). The Panel easily agrees that" movil" and its plural form "moviles" are generic in respect of anything conveying a meaning of mobility or movement, and equally agrees that a letter can stand for any word beginning with such letter. However, the Panel considers that T MOBILE and T MOBIL are composite marks, where the "T" at the beginning is what confers the marks their distinguishing power. It is very unlikely that an IT and telephony products provider, including mobile phones (inter alia Alcatel and Nokia mobile phones) such as Respondent, at the moment of registration could have ignored the existence of the T-MOBIL and T-MOBILE marks, to which the domain names are confusingly similar. Furthermore, in May 1998 the T-Mobil international mark No. 680034 was accepted in Spain, the country of Respondentís seat and business, for all goods and services in classes 9, 14, 16 and 36. Typically, phones and mobile phones are products of class 9. See 4.3. and 6.1. supra.
As to the <t-moviles.com> and <tmoviles.com> domain names Respondent contends that it has been making a legitimate or fair use since 2001 until three months before submitting the response, by means of re-directing the corresponding Web pages to Respondentís Website. As to the <t-movil.com> domain name, Respondent contends that it is making a fair or legitimate use by forwarding "www.t-movil.com" to Respondentís own Website, where equipment and services for telecommunications are offered. An independent Panelís connection of October 19, 2002, to the "www.t-movil.com" Website confirmed that the domain name is being re-directed to Respondentís own Website where by means of an internal link to "Telefonía móvil" (Spanish for "mobile telephony"), Alcatel and Nokia mobile phones are being offered for sale. The expressions "t-movil", "t-moviles" and "tmoviles" may be evocative of "telefonía móvil". However, this Panel is not convinced that by the time of registration of the domain names Respondent ignored the existence of the T-Mobile/T-Mobil trademarks, trade name, products and services of Complainant, because Respondent is a dealer conducting business in telecommunications and selling or trading in IT products since 1993, and it is presently selling mobile phones. Instead it appears that the re-direction or forwarding to Respondentís website is a bad faith use under UDRP, Paragraph 4(b)(iv) (see 6.3. infra).
The Panel concludes that Respondent lacks rights or legitimate interests in the domain names (UDRP, Paragraph 4(a)(ii)).
6.3. Registration and Use in Bad Faith.
The panel in WIPO Case No. D2001-1240 (at 5.c.) found that Respondent had engaged in a pattern of registering domain names reproducing the trademarks or trade names of others. This is an important fact because in the present issue Complainant alleges that Respondent, after the decision in WIPO Case No. D2001-1240, "has now deleted the domain name registrations described above in order to destroy these well-known traces of the Respondentís cybersquatting activities". Complaint, bottom of page 12. Respondent replies that: "The domain names with the word "online" (iberia-online, mentaonline Ö) that the Complainant states are registered by VISION COMPUTER are available, and to the disposal of any company. Never the Respondent has deleted domain names in order to destroy traces". Response, section III, C.
Under Rules, Paragraph 5(b)(i) the response shall "(r)espond specifically to the statements and allegations contained in the complaint (Ö)". Respondent does not deny that by July 20, 2001, it was the registrant of various domain names corresponding to third partiesí trademarks, which is a fact established by the panel in WIPO Case No. D2001-1240. Respondent is denying the deletion of the domain names, but it does not contest that it must have taken the necessary steps for the concerned domain name registrations to be available, as they are now, as alleged by Complainant.
As established in WIPO No. Case D2001-1240 Respondent engaged in a pattern of registering various domain names corresponding to well known trademarks belonging to third parties (IBERIA, TERRA, DHL, etc), which together with other factors led that panel to find that Respondent had registered <t-mobiles.com> and <tmobiles.com> in bad faith. In the domain names dealt with in the present case the only differences with Complainantís marks (and with the domain names dealt with in WIPO Case No. D2001-1240) are minor or obvious variations, or mistypings and misspellings of such marks. All this leads this Panel to conclude that at registering <t-movil.com>, <t-moviles.com> and <tmoviles.com> Respondent was preventing Complainant from reflecting its marks in corresponding domain names. This is a circumstance of bad faith registration under UDRP, Paragraph 4(b)(ii), that reads: "you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct".
Alternatively the bad faith registration requirement can be directly inferred from Respondentís assertion that it "registered these names for the development of its activity, in view to encourage the visit to its website "www.vision-computer.com". Response, section II, B. This connects registration in bad faith with use in bad faith, because Respondent, as seen in 6.2. above, has re-directed or is re-directing the t-movil.com, tmoviles.com and t-moviles.com websites to its own Website where inter alia it is selling Alcatel and Nokia mobile phones. That is, Respondent is attracting Internet users misspelling or mistyping Complainantís marks to Respondentís Website, and offering to sell mobile phones from sources other than Complainant. This Panel finds that under UDRP, Paragraph 4(b)(iv) such action is an evidence of bad faith use because by using the domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the complainant's marks as to the source, sponsorship, affiliation, or endorsement of Respondentís website or of a product or service on Respondentís website. Complainant has made out its case under UDRP, Paragraph 4(a)(iii).
Respondent contends that during the negotiation about the transfer of the domain names Complainantís representatives used an "inelegant strategy in order for Vision Computer not to submit this claim to the WIPO". Response, section III, C. Respondent is alleging that it was "cheated into default" by Complainant, but its contention seems without ground, on the following reasons:
First, as seen at 4.8. supra Respondent was in default as early as by November 27, 2001. A suspension of the proceedings was granted at the Complainantís request of December 2, 2001, although Complainant - following Respondentís default - was already in a very favorable position. A further suspension was granted later. The proceedings were recommenced as late as March 27, 2002. The file was transmitted to the sole panelist by April 23, 2002. Respondent did not make any submission in WIPO Case No. D2001-1240 following its default, and the case was finally decided on April 26, 2002. That panelís decision is reasoned and soundly based, and Respondent did not criticize any of its findings. Additionally, a search of "Whois" databases independently conducted by this panelist on October 19, 2002, shows that the domain names in that case are registered in Deutsche Telekom AGís name since July 5, 2002; that is, it is most likely that Respondent has not challenged the panelís decision in WIPO Case No. D2001-1240 under Rules, Paragraph 4(k).
Second, by submitting the documents requested by the Panel in Procedural Order No. 1 (see 3.2. above) Respondent has tried to prove that Complainantís representatives deceived it pending WIPO Case No. D2001-1240. However as per the letter dated June 3, 2002, by Complainantís representatives in Barcelona (Messrs. Mullerat) to Mr. Rosas of Respondent the explanation was provided that the agreement was not be executed since two (<t-mobiles.com> and <tmobiles.com>) out of the five domain names - had already been ordered to be transferred by the panel in WIPO Case No. D2001-1240. According to Messrs. Mullerat's letter the contract had therefore become legally impossible. It also appears that there was disagreement about which party was bound to sign the agreement first.
Third, as per Annex H1 to the Response, Paragraph 7 of the draft agreement sent on January 11, 2002, by Dr. Renck to Mr. Rosas of Vision Computer reads: "After the registration of the four domain-names assigned herewith at Namesecure.com in the name of the buyer, the buyer will immediately withdraw its complaint filed under no. D2001-1240 with the WIPO Arbitration and Mediation Center". Similarly, Paragraph 7 of the draft agreement of domain name transfer, identified as "Draft of 05 March 2002" and marked as Annex I of the Response, reads: "After the registration of the five domain-names assigned herewith at Namesecure.com Inc. or INWW or VeriSign respectively in the name of the buyer, the buyer will immediately withdraw its complaint filed under no. D2001-1240 with the WIPO Arbitration and Mediation Center". This means that the withdrawal of the complaint before the Center was subject to the full execution of the agreement including the transfer of the domain registrations to Complainant. Clearly, under the draft agreement Complainant was not obliged to withdraw its complaint before the full completion of such a condition.
In any case, and considering the record, this Panel has not noticed any bad faith conduct in Complainantís representatives.
The domain names at issue are confusingly similar to Complainantís trademarks. Respondent lacks rights or legitimate interests in the domain names. Respondent has registered, and is using them in bad faith.
For the above reasons and pursuant to Policy, Paragraph 4(i) and Rules, Paragraph 15, the Administrative panel grants the remedy requested in the complaint, and requires that the <t-moviles.com>, <tmoviles.com> and <t-movil.com> domain name registrations be transferred to Complainant, Deutsche Telekom AG.
Roberto A. Bianchi
Dated: October 24, 2002