WIPO Domain Name Decision: D2005-0311

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Deutsche Telekom AG v. WWW Enterprise, Inc.

Case No. D2005-0311

1. The Parties

The Complainant is Deutsche Telekom AG, Bonn, Germany, represented by Lovells, Munich, Germany.

The Respondent is WWW Enterprise, Inc., Los Angeles, California, United States of America.

2. The Domain Names and Registrar

The disputed domain names are:

<t-mobilecom.com>, <t-mobilecom.net>, <tmobilecom.net>, <t-mobilr.net>, <tmobilr.net>, <t-mobilw.net>, <tmobilw.net>, <t-onlinede.com>, <wwwt-online.com>, <t-onlinede.org>, <tonlinede.org>, <tonlinede.net> and <t-onlinede.net> (Domain Names). They are all registered with OnlineNic, Inc. d/b/a China-Channel.com (OnlineNic) except for <t-onlinede.net> which is registered with Iholdings.com Inc. d/b/a DotRegistrar.com (Iholdings).

3. Procedural History

A Complaint (in connection with the domain names <t-mobilecom.com>, <t-mobilecom.net>, <tmobilecom.net>, <t-mobilr.net>, <tmobilr.net>, <t-mobilw.net>, <tmobilw.net>, <t-onlinede.com>, <wwwt-online.com>) was filed with the WIPO Arbitration and Mediation Center (the “Center”) electronically on March 24, 2005, and in hard copy on March 29, 2005. On March 24, 2005, the Center transmitted to OnlineNic a request for registrar verification in connection with the above Domains Names. On March 25, 2005, OnlineNic transmitted to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint electronically on April 14, 2005, and in hard copy on April 18, 2005. The Center verified that the Complaint, together with the amendment to 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 April 19, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 9, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 12, 2005.

On April 29, 2005, the Complainant submitted electronically an Amended Complaint in order to include in the proceedings the following four additional Domain Names:

<t-onlinede.org>, <tonlinede.org>, <t-onlinede.net> and <tonlinede.net>.

On May 2, 2005, the Center informed the parties that adding additional domain names once proceedings have commenced is solely within the discretion of the Panel.

On May 23, 2005, the Center transmitted by email to OnlineNic a request for registrar verification in connection with the Domain Names <t-onlinede.org>, <tonlinede.org>, <t-onlinede.net> and <tonlinede.net>. On May 25, 2005, OnlineNic transmitted by email its verification response confirming that the Respondent is listed as the registrant for only three of the above Domain Names (for which it provided the relevant contact details for the administrative and technical contact) indicating that <t-onlinede.net> was not registered with OnlineInc. Following the Center’s request for registrar verification, on May 27, 2005, Iholdings transmitted by email its verification response confirming that the Respondent is listed as the registrant of the Domain Name <t-onlinede.net> and providing the contact details.

On June 8, 2005, the Center appointed Anna Carabelli as the sole panelist in this matter. 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.

On July 15, 2005, the Center informed the Complainant that the Panel (i) accepted to include in the proceedings the four additional Domain Names indicated in the Amended Complaint provided that all procedural requirements set forth in the Rules were met also in connection with the Amended Complaint; (ii) requested the Center to complete all necessary relevant procedural steps; and (iii) consequently postponed the due date for decision. In addition, the Center notified the Complainant that the Amended Complaint was administratively deficient and on July 21, 2005, the Complainant filed an amendment to the Amended Complaint.

The Center verified that the Amended Complaint, as cured by Complainant, satisfied the formal requirements of the Policy, the Rules, and the Supplemental Rules.

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Amended Complaint. In accordance with the Rules, paragraph 5(a), the due date for Response was set to August 16, 2005. The Respondent did not submit any response. Accordingly, on August 24, 2005, the Center notified the Respondent’s default.

4. Factual Background

The Complainant is Deutsche Telekom, a major German telecommunications services provider and one of the largest telecommunications companies in the world. The Complainant’s websites at “www.t-mobile-com” and “t-online.com” (Attachment C to the Complaint) and at “www.deutsche.telekom.com” confirm that the Complainant also operates on an international scale (being present in more than 50 countries worldwide, including the United States of America through the local subsidiary T-Mobile USA) offering integrated solutions in the telecommunications market, including phones and services for mobile communications, and Internet and related services.

The Complainant has provided evidence of registration of the following national, European Union, United States and International trademarks reflecting:

the mark T-MOBILE (Attachments D,E and F to the Complaint):

- United States Reg. No. 2282432 filed on February 27, 1997, in connection with international classes of goods and services CL. 9, 14, 16, 18, 25, 28, 36, 37, 38, 41, 42;

- United States Reg. No. 2284387 filed on February 27, 1997, in connection with international classes of goods and services CL. 9, 14, 16, 18, 25, 28, 36, 37, 38, 42;

- European Union Reg. No. 00485441 filed on February 26, 1997, in connection with international classes of goods and services CL. 9, 14, 16, 18, 25, 28, 36, 37, 38, 41, 42;

- International Reg. No. 00680034 filed on February 26, 1997, in connection with international classes of goods and services CL. 9, 14, 16, 18, 25, 28, 36, 37, 38, 41, 42;

- International Reg. No. 00680035 filed on February 26, 1997, in connection with international classes of goods and services CL. 9, 14, 16, 18, 25, 28, 36, 37, 38, 41, 42;

and the mark T-ONLINE (attachments G and H to the Complaint):

- United States Reg. No. 2432440 filed on November 2, 1995, in connection with international classes of goods and services CL. 9, 14, 16, 18, 25, 28, 36, 37, 38, 41, 42;

- International Reg. No. 00650171 filed on January 11, 1996, in connection with international classes of goods and services CL. 9, 16, 36, 37, 38, 41, 42;

- International Reg. No. 00763492 filed on March 14, 2001, in connection with international classes of goods and services CL. 1, 2, 3, 4, 5, 6, 7, 8, 10, 11, 12, 13, 14, 15, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 39, 40;

- International Reg. No. 00653891 filed on January 11, 1996, in connection with international classes of goods and services CL. 9, 16, 36, 37, 38, 41, 42;

- European Union Reg. No. 00214528 filed on April 1, 1996, in connection with international classes of goods and services CL. 9, 16, 36, 37, 38, 41, 42;

- European Union Reg. No. 00214478 filed on April 1, 1996, in connection with international classes of goods and services CL. 9, 16, 36, 37, 38, 41, 42;

- German Reg. No. 39539437 filed on September 27, 1995, in connection with international classes of goods and services CL. 9, 16, 36, 37, 38, 41, 42;

- German Reg. No. 30119032 filed on March 21, 2001, in connection with international classes of goods and services 9, 16, 35, 36, 38, 39, 41, 42.

The Complainant has further provided evidence (Attachment I to the Complaint) of registration of the domain names: <t-online.com>, <t-online.net>, <t-online.org>, <t-online.biz>, <tonline.com>, <tonline.net>, <tonline.org>, <tonline.biz>, <t-mobile.com>, t-mobile.net>, <t-mobil.net>, <tmobile.net>, directly or through its subsidiary T-Mobile International AG.

The Respondent registered in 2004 the domain names <t-mobilecom.com>, <t-mobilecom.net>, <tmobilecom.net>, <t-mobilr.net>, <tmobilr.net>, <t-mobilw.net>, <tmobilw.net>, <t-onlinede.com>, <wwwt-online.com>, <t-onlinede.org>, <tonlinede.org>, <tonlinede.net> with OnlineNic and the domain name <t-onlinede.net> with Iholdings (Attachment A to the Complaint).

The Complainant has also provided evidence (Attachment J) that the Domain Names are used by the Respondent in relation to a search engine providing sponsored links for various categories, including phones and telecommunications services.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- it is Europe’s largest telecommunications company and one of the world-wide engines of innovation in the industry, covering the entire spectrum of modern telecommunications;

- Complainant’s subsidiary T-Mobile International AG & Co.KG is one of the largest GSM mobile communications providers in the world; T-Mobile USA is one of the largest growing wireless service providers in the United States;

- Complainant’s subsidiary T-Online International AG carries on the business of providing Internet and related services; a sector in which Complainant and its products enjoy a worldwide reputation with nearly 14 million customers;

- the names ‘T-Mobile’ and ‘T-Online’ are universally recognized and relied upon as identifying the Complainant, since they are the corporate names under which the Complainant’s business in the Internet and mobile communications sector is carried out;

- the Domain Names are confusingly similar to the Complainant’s trademarks, company and trade names “T-Mobile” and “T-Online”;

- the Respondent has no rights or legitimate interests in the Domain Names since: (i) it is not, and never has been, a representative or licensee of the Complainant, nor is it otherwise authorized to use the Complainant’s marks; (ii) the Respondent does not use the Domain Names in connection with a bona fide offering of goods or services, nor is it making a legitimate non-commercial or fair use of the Domain Names; (iii) on the contrary, the Domain Names resolve to a website providing sponsored links;

- the Domain Names have been registered in bad faith since when registering them, the Respondent certainly had knowledge of the Complainant’s trademarks and business names ‘T-Mobile’ and ‘T-Online’, given the reputation enjoyed by the Complainant’s trademarks worldwide and in the United States;

- the Domain Names are being used in bad faith for the purpose of attracting for commercial gain Internet users by creating a likelihood of confusion with the Complainant’s trademarks. As a matter of fact, the Domain Names point toward a website providing sponsored links: every link activated by an Internet user enables the owner of the web-page where the link is displayed to collect a financial remuneration proportional to the number of connections.

- the Respondent’s bad faith is further evidenced by the following circumstances: (i) in the Deutsche Telekon AG v. WWW Enterprise Inc. WIPO Case No. D2004-1078, the Complainant obtained the transfer of the domain name <tmobil.net> registered by the Respondent under similar circumstances; (ii) the Respondent also lost Air Austral v. WWW Enterprise, Inc, WIPO Case No. D2004-0765 in relation to the domain name <airaustral.net>; (iii) the registration by the Respondent of thirteen Domain Names which slightly differ from the Complainant’s well-known trademarks amounts to “typo-squatting”.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to decide the 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.

Under paragraph 4(a) of the policy, a Complainant must prove each of the following:

(i) the domain name at issue is identical or confusingly similar to the complainant’s trademark or service mark; and

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purposes of paragraph 4(a)(iii), shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by a respondent, shall be evidence of that respondent’s right to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii) above.

A. Identical or Confusingly Similar

The Complainant has proven to have acquired trademarks rights in T-MOBILE and T-ONLINE by virtue of a number of national, European Union, United States and International registrations. The names ‘T-Mobile’ and ‘T-Online’ are also the corporate names under which the Complainant’s business in the Internet and mobile communications sectors are carried out worldwide.

Each of the thirteen Domain Names are confusingly similar to the Complainant’s trademarks and corporate names ‘T-Mobile’ or ‘T-Online’. In particular:

- the only difference between the domain name <wwwt-online.com> and the Complainant’s trademark T-ONLINE is the acronym “www” (world wide web) preceding the trademark;

- the only differences between the domain names <t-mobilecom.net>, <tmobilecom.net> and <t-mobilecom.com> and Complainant’s trademark T-MOBILE are the suffix “com” following the trademark and the fact that the prefix “t” is not hyphenated;

- the only differences between the domain names <t-moilr.net> tmobilr.net>, <t-mobilw.net> and <tmobilw.net> and the Complainant’s trademark ‘T-Mobile’ are the letters “r” and “w” instead of the letter “e” at the end of the word “mobile” and the fact that the prefix “t” is not hyphenated;

- the only differences between the domain names <t-onlinede.com> <t-onlinede.org>, <tonlinede.org>, <t-onlinede.net> and <tonlinede.net> and the Complainant’s trademark T-ONLINE are the suffix “de” following the trademark and the fact that the prefix “t” is not hyphenated.

It is an established principle that the use or absence of punctuation marks, such as hyphens, does not influence the consideration of similarity or alter the fact that a name is identical to a mark (See Chernow Communications, Inc. v. Jonathan D. Kimball, WIPO Case No. D2000-0119; BIC Deutschland GmbH & Co KG v. Paul Tweed, WIPO Case No. D2000-0418; The Channel Tunnel Group Ltd. v. John Powell, WIPO Case No. D2000-0038).

It has also been consistently affirmed that the mere addition of a generic term and/or number as well as slight spelling variations do not create a different trademark and cannot be considered sufficient to avoid confusion between a domain name and the complainant’s trademark (GA Modefine SA v. Riccardo Bin Kara-Mat, WIPO Case No. D2002-0195; Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022; Nintendo of America, Inc. v. Gray West International, WIPO Case No. D2000-1219; Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp., WIPO Case No. D2000-0464 – see also A & F Trademark, Inc., Abercrombie & Fitch Stores, Inc., Abercrombie & Fitch Trading Co. Inc. v. Party Night, Inc., WIPO Case No. D2003-0172; Lanco, Inc., Lane Bryant, Inc. and Charming Shoppes, Inc. v. Party Night, Inc., c/o Peter Carrington, WIPO Case No. D2003-0173; Dr. Ing. h.c. F. Porsche AG v. Domains by Proxy, Inc. and Vladimir Putinov, WIPO Case No. D2004-0311; Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/k/a Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330; Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362; Nokia Corporation v. Horoshiy, Inc., LaPorte Holdings, WIPO Case No. D2004-0851; PepsiCo, Inc. v. PEPSI, SRL(a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY(a/k/a EMS), WIPO Case No. D2003-0696).

As mentioned above, in the case at hand, the Complainant’s trademarks are entirely included in the Domain Names preceded by the acronym “www” (<wwwt-online.com>) or succeeded by the generic/country top level domain “com” or “de” (<t-onlinede.com>, <t-onlinede.org>, <tonlinede.org>, <t-onlinede.net>, <tonlinede.net> <t-mobilecom.net>, <tmobilecom.net> and <t-mobilecom.com>) without a dot. Such elements are commonly used in domain names (although succeeded or preceded by a dot) and therefore do not have any distinguishing capacity.

In light of the above, the Panel finds that this element has been established.

B. Rights or Legitimate Interests

Paragraph 4 (c) of the Policy sets out in particular but without limitation three circumstances which, if proved by a respondent, shall be evidence of that respondent’s rights to or legitimate interests in a domain name for the purpose of paragraph 4(a)(ii), namely:

(i) before any notice of the dispute to the respondent, the respondent’s use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or

(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Complainant has put forward prima facie evidence that none of the three circumstances establishing legitimate interests or rights mentioned above applies. As stressed by many UDPR decisions, in such a case the burden of proof shifts to the respondent to rebut the evidence (see among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).

The Respondent has not filed any submission or evidence whatsoever in order to rebut Complainant’s prima facie evidence.

There is no evidence before the Panel that the Respondent has any rights or legitimate interests in the Domain Names for the purpose of paragraph 4(a)(ii) of the Policy under the above criteria or otherwise.

The Panel therefore finds that the Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

The Complainant has shown that its trademarks T-MOBILE and T-ONLINE have been widely used to identify Internet and mobile communications services offered by the Complainant and have acquired a worldwide reputation, and that its subsidiary T-Mobile USA is very active in the United States where it counts more than 19.2 million customers (see the Company Information section dedicated to T-Mobile USA on the Complainant’s website “www.t-mobile.com”) and where the Respondent is based.

As established above, the Domain Names are confusingly similar to the Complainant’s trademarks and the Respondent has no rights or legitimate interests in the Domain Names.

The Panel may therefore reasonably consider that the Respondent was aware of the Complainant’s trademarks at the time when he registered the Domain Names (see Nokia, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397).

The Complainant has also shown that the Domain Names are used in connection with a search engine providing various sponsored links related to different services including telecommunications and Internet services. As stressed in Deutsche Telekon AG v. WWW Enterprise Inc., WIPO Case No. D2004-1078), it is now a well known practice to display on a web page or search engine various links to other commercial websites, every link activated by an Internet user enables the host of the search engine to collect financial remuneration proportional to the number of connections. Previous panels have established that this practice constitutes bad faith use (Lowen Corporation d/b/a/ Lowen Sign Company v. Henry Chan, WIPO Case No. D2004-0430; Associazione Radio Maria v. Mr. Hong Hee Dong, WIPO Case No. D2005-0062).

In addition, the Complainant has provided evidence that the Respondent is the registrant of other domain names containing well-know trademarks and his registration and use of such domain names have been found to be in bad faith (See Air Austral v. WWW Enterprise, Inc, WIPO Case No. D2004-0765 and Deutsche Telekon AG v. WWW Enterprise Inc., WIPO Case No. D2004-1078). In the view of the Panel, this fact and the fact that the Respondent has failed to submit a Response in this proceeding, as well as in the previous ones, fortify the Complainant’s contentions that the Domains Names were registered and are being used in bad faith for the purpose of attracting, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s trademarks.

Based on the above, the Panel finds that the Domain Names have been registered and are being used in bad faith.

7. Decision

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 Names <t-mobilecom.com>,

<t-mobilecom.net>, <tmobilecom.net>, <t-mobilr.net>, <tmobilr.net>, <t-mobilw.net>, <tmobilw.net>, <t-onlinede.com>, <wwwt-online.com>, <t-onlinede.org>, <tonlinede.org>, <tonlinede.net> and <t-onlinede.net> be transferred to the Complainant.

Anna Carabelli
Sole Panelist

Dated: September 7, 2005