WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Deutsche Telekom AG v. Privacy Administrator, Anonymize, Inc.

Case No. D2021-1697

1. The Parties

Complainant is Deutsche Telekom AG, Germany, represented by NOTOS Partnerschaft von Rechtsanwälten mbB, Germany.

Respondent is Privacy Administrator, Anonymize, Inc., United States of America (“United States” and “USA”).

2. The Domain Name and Registrar

The disputed domain name <tmobilepr.com> (the “Domain name”) is registered with Epik, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2021. On May 31, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 1, 2021, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On June 2, 2021, the Center informed Complainant of additional registrant information provided by the Registrar.

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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 22, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 23, 2021.

The Center appointed Marina Perraki as the sole panelist in this matter on June 30, 2021. 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 is a German telecommunications provider, one of the leading integrated telecommunications companies, with approximately 242 million mobile customers, 27 million fixed-network lines and 22 million broadband lines. Complainant is present in more than 50 countries and generated revenue of EUR 101 billion in 2020, of which about 66 percent outside Germany. “T-Mobile” is the brand under which Complainant conducts mobile communications business via its subsidiaries in several countries, in particular in the USA and Puerto Rico.

Complainant owns a subsidiary under the corporate name T-Mobile USA, Inc., through which it provides wireless services, devices and accessories to approximately 102,1 million postpaid, prepaid and wholesale customers.

Complainant’s goods and services under T-Mobile and Metro by T-Mobile brands are provided through owned and operated retail stores, as well as through the websites “www.t-mobile.com” and “www.metrobyt-mobile.com”, the T-Mobile app and customer care channels. Furthermore, T-Mobile USA sells devices to dealers and other third-party distributors for resale through independent third-party retail outlets and a variety of third-party websites.

Complainant and its subsidiary T-Mobile Puerto Rico, LLC, have registered and use the domain names <t-mobilepr.com>, <t-mobile.com> (as well as other similar domain names under the Top-Level Domains “.us”, “.net”, “.pl”, and “.nl”).

Complainant is the owner of numerous trademark registrations for T-MOBILE in several countries, including:

- United States of America trademark registration No. 2911878 for T-MOBILE (stylised), filed on April 23, 1996, and registered on December 21, 2004, for goods and services in international classes 9, 16, 36, 37, 38, 41, and 42;
- International trademark registration No. 680034 for T-MOBILE (word), registered on February 26, 1997, for goods and services in international classes 9, 14, 16, 18, 25, 28, 36, 37, 38, 41, and 42; and
- International trademark registration No. 864393 for T-MOBILE (word), registered on August 11, 2005, for goods and services in international classes 14, 18, 25, 28, 32, 35, 36, and 42.

The Domain Name was registered on September 17, 2007, and redirected to different websites at different times, not connected to Complainant. As Complainant demonstrated, the Internet users are even directed to a fake news website, imitating per Complainant inter alia the website of the German newspaper “Bild”.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) 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.

A. Identical or Confusingly Similar

Complainant has demonstrated rights through registration and use on the T-MOBILE trademark.

The Panel finds that the Domain Name is confusingly similar to the T-MOBILE trademark.

The Domain Name incorporates the said trademark of Complainant in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).

The omission of the hyphen “-” in the Domain Name, between the letter “t” and the word “mobile” does not prevent a finding of confusing similarity, as the T-MOBILE trademark remains clearly recognizable (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).

The generic Top-Level Domain (“gTLD”) “.com” is disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).

The Panel finds that the Domain Name is confusingly similar to the T-MOBILE trademark.

Complainant has established paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to Respondent of the dispute, Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii) Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or

(iii) Respondent 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 trademark or service mark at issue.

The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.

Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Name.

There is no evidence that Respondent has been commonly known by the Domain Name.

On the contrary, the Domain Name is used to redirect to third party sites, not connected to Complainant, including a fake news website, imitating per Complainant inter alia the website of the German newspaper “Bild”. Per Complaint, in the cases tested by Complainant, Internet users will at one stage be asked to enter personal data. A respondent’s use of a complainant’s mark to redirect Internet users would not support a claim to rights or legitimate interests (WIPO Overview 3.0, section 2.5.3).

Furthermore, there is no evidence on record giving rise to any rights or legitimate interests in the Domain Name on the part of Respondent within the meaning of paragraphs 4(c)(ii) and 4(c)(iii) of the Policy.

In addition, the Panel notes the nature of the Domain Name (which is almost identical to Complainant’s
T-MOBILE trademark, and domain name <t-mobilepr.com>), and finds that such composition carries a risk of implied affiliation with the Complainant.

The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.

Complainant has established Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or

(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes that Respondent has registered and used the Domain Name in bad faith. Because the T-MOBILE trademark had been widely used and registered at the time of the Domain Name registration by Respondent, and noting the composition of the Domain Name, the Panel finds that Respondent had Complainant’s trademark in mind when registering the Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).

Furthermore, Respondent could have conducted a trademark search and would have found Complainant’s prior registrations in respect of the T-MOBILE trademark (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata, WIPO Case No. D2012-1338).

The Domain Name was used intentionally, for commercial gain, creating a likelihood of confusion with Complainant’s trademark and business as to the source, sponsorship, affiliation or endorsement of the websites it resolved to. This supports a finding of bad faith registration and use (WIPO Overview 3.0, section 3.1.4).

Furthermore, the Domain Name is almost identical with Complainant’s domain name used for its website at “www.t-mobilepr.com” and the domain name <t-mobilepr.com>, registered and used per Complaint by Complainant’s group.

As regards bad faith use, the Domain Name redirected to different sites at different times. These included a fake news website, imitating for example the website of one of the biggest German newspapers “Bild”. Such use of a domain name to redirect to different websites each time constitutes evidence of a respondent’s bad faith.

Finally, the Panel considers also the apparent concealment of the Domain Name holder’s identity through use of a privacy shield, which is further indicative of bad faith (BHP Billiton Innovation Pty Ltd v. Domains By Proxy LLC / Douglass Johnson, WIPO Case No. D2016-0364).

Under these circumstances, the Panel finds that Respondent has registered and used the Domain Name in bad faith.

Complainant has established Policy, paragraph 4(a)(iii).

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 <tmobilepr.com> be transferred to Complainant.

Marina Perraki
Sole Panelist
Date: July 14, 2021