WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Deutsche Telekom AG v. 石磊 (Shilei)

Case No. D2021-2819

1. The Parties

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

The Respondent is 石磊 (Shilei), China.

2. The Domain Names and Registrar

The disputed domain names <tmobilaccess.com>, <tmobileacces.com>, <t-mobileaccess.com>, and <tmobileacess.com> are registered with DNSPod, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2021. On August 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 30, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 17, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint in English on September 22, 2021.

On September 17, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On September 21, 2021, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

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” 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 the Respondent in English and Chinese of the Complaint, and the proceedings commenced on September 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 13, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 22, 2021.

The Center appointed Sok Ling MOI as the sole panelist in this matter on October 29, 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

The Complainant is one of the world’s leading telecommunications companies and is present in more than 50 countries. The Complainant’s subsidiary, T-Mobile USA, Inc., provides wireless services to some 100 million postpaid, prepaid, and wholesale customers, and generates revenue by providing affordable wireless communications services to these customers. In China, the Complainant partners with its subsidiary, T-Systems, to provide services in the areas of connectivity, digitalization, cloud and infrastructure, and security.

The Complainant and its subsidiary, T-Mobile USA, Inc., have registered and used the following domain names in association with their mobile communication business:

<t-mobile.com>
<t-mobile.us>
<t-mobile.net>
<tmobile.com>
<tmobile.net>
<tmobileaccess.com>

The domain name <tmobileaccess.com> was registered on October 28, 2020, while the disputed domain names were registered one day later on October 29, 2020. The Complainant owns numerous trade mark registrations for T-MOBILE in various jurisdictions, including the following:

The disputed domain names were registered on October 29, 2020. Each of the disputed domain names resolves to a website displaying links to various third party websites, which are either pay-per-click (“PPC”) links or websites for illegal data phishing.

5. Parties’ Contentions

A. Complainant

The Complainant claims that its T-MOBILE trade mark is well-known throughout the world.

The Complainant contends that the disputed domain names are confusingly similar to its T-MOBILE trade mark, the Respondent has no rights or legitimate interests in respect of the disputed domain names, and that the disputed domain names have been registered and are being used in bad faith.

The Complainant requests for the transfer of the disputed domain names.

B. Respondent

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

6. Discussion and Findings

6.1. Language of the Proceeding

Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

Paragraphs 10(b) and (c) of the Rules requires the Panel to ensure that the proceeding takes place with due expedition and that the Parties are treated equitably and given a fair opportunity to present their respective cases.

The language of the Registration Agreements for the disputed domain names is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and requested that English be the language of the proceeding. The Respondent did not respond on the issue of the language of the proceeding.

Although the Respondent appears to be a native Chinese individual, the Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:

(a) the disputed domain names are registered in Latin characters, rather than Chinese script; and

(b) according to the evidence submitted by the Complainant, the websites to which the disputed domain names resolve all contain contents and links in English.

In addition, the Respondent has not objected to the language of the proceeding being English.

Considering the above circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in his or her ability to articulate the arguments for this case.

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that (i) it shall accept the Complaint and all supporting documents as filed in English; and (ii) English shall be the language of the proceeding; and (iii) the decision will be rendered in English.

6.2 Findings

Paragraph 4(a) of the Policy directs that a complainant must prove each of the following three elements to obtain an order for the domain name to be cancelled or transferred:

(i) the domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;

(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.

On the basis of the arguments and evidence introduced by the Complainant and the Respondent, the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in T-MOBILE by virtue of its use and registration of the same as a trade mark.

Each of the disputed domain names is an intentional typographical variant of the Complainant’s domain name <tmobileaccess.com>, and incorporates an intentional typographical variant of the Complainant’s trade mark T-MOBILE. The consensus view of previous UDRP panels is that a domain name which contains a common or obvious misspelling of a trade mark will normally be found to be confusingly similar to such trade mark, where the misspelled trade mark remains sufficiently recognizable in the domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9. In this case, the typographical errors (the addition/omission/reversal of a single letter or symbol) do not prevent a finding of confusing similarity between the disputed domain names and the Complainant’s trade mark. The addition of the generic Top-Level Domain (“gTLD”) “.com” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.

Consequently, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trade mark.

Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, a complainant bears the burden of proof to establish that the respondent lacks rights or legitimate interests in the domain name. However, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with evidence in support of its rights or legitimate interests in the domain name. The respondent may establish its rights in the domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:

(i) before any notice to it of the dispute, the 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) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or

(iii) the 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 trade mark or service mark at issue.

See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao Internet foshan co, ltd, WIPO Case No. D2013-0974.

The Complainant has confirmed that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the T-MOBILE trade mark or to seek registration of any domain name incorporating the trade mark. The Respondent appears to be an individual by the name of “石磊 (Shilei)”. There is no evidence suggesting that the Respondent is commonly known by the disputed domain names or has acquired any trade mark rights in the term “t-mobile”.

According to the evidence submitted by the Complainant, each of the disputed domain names resolves to various third party websites, which are either PPC links or websites for illegal data phishing. Such conduct is not legitimate noncommercial or fair use of the disputed domain names. The consensus view of previous UDRP panels is that use of a domain name to post PPC links may be permissible in some circumstances, but would not of itself automatically confer rights or legitimate interests arising from a “bona fide offering of goods or services” or from “legitimate noncommercial or fair use” of the domain name. See section 2.9 of WIPO Overview 3.0. In this case, the Panel finds such use of the disputed domain names does not confer any rights or legitimate interests on the Respondent.

The Panel is satisfied that the Complainant has made out a prima facie case showing that the Respondent lacks rights or legitimate interests in the disputed domain names. The burden of production thus shifts to the Respondent to come forward with evidence of its rights or legitimate interests in the disputed domain names. Since the Respondent did not file a Response, the prima facie case has not been rebutted.

Consequently, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain names.

Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

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

By virtue of its extensive use and advertising, the Complainant and its trade mark T-MOBILE enjoy a significant reputation worldwide and a strong online presence. Considering the nature of the disputed domain names, there is no doubt that the Respondent was aware of the Complainant and its trade mark when he registered the disputed domain names. In this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks transcends national borders. As such, a cursory Internet search would have disclosed the T-MOBILE trade mark and its extensive use by the Complainant. Registration of the disputed domain names that incorporates the Complainant’s well-known trade mark suggests opportunistic bad faith.

According to the evidence submitted by the Complainant, each of the disputed domain names resolves to various third party websites, which are either PPC links or websites for illegal data phishing. The consensus view of previous UDRP panels is that a domain name registrant cannot disclaim responsibility for content appearing on the website associated with its domain name, even if such registrant may not be exercising direct control over such content – for example, in the case of advertising links appearing on an “automatically” generated basis. See WIPO Overview 3.0, section 3.5.

A presumption may be made that the Respondent stands to profit or make a “commercial gain” from advertising revenue by such an arrangement trading on third party trade marks. In the Panel’s opinion, such use of the disputed domain names clearly seeks to capitalize on the trade mark value of the Complainant’s T-MOBILE trade mark resulting in misleading diversion.

In registering the disputed domain names that are typographical variants of the Complainant’s trade marks and domain names, and using them to offer sponsored links or redirect Internet users to third party websites, the Respondent deprives the Complainant of the opportunity to sell its goods or services to prospective clients who are clearly looking for the Complainant. The Respondent is clearly engaging in bad faith.

The Panel therefore determines that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s websites. As such, the Panel is satisfied that the Respondent is using the disputed domain names for mala fide purposes and for commercial gain, and the Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case.

Taking into account all the circumstances, the Panel concludes that the Respondent has registered and used the disputed domain names in bad faith.

Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) 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 disputed domain names, <tmobilaccess.com>, <tmobileacces.com>, <t-mobileaccess.com>, and <tmobileacess.com> be transferred to the Complainant.

Sok Ling MOI
Sole Panelist
Date: December 14, 2021