WIPO Arbitration and Mediatin Center

ADMINISTRATIVE PANEL DECISION

Deutsche Telekom AG v. Mark Hnatjuk

Case No. D2015-2267

1. The Parties

Complainant is Deutsche Telekom AG of Bonn, Germany, represented by Bird & Bird LLP, Germany.

Respondent is Mark Hnatjuk of Bangkok, Thailand.

2. The Domain Name and Registrar

The disputed domain name <tmobilephones.info> is registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2015. On December 15, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 15, 2015, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceeding commenced on January 5, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 25, 2016. Respondent did not submit any response. Accordingly, the Center issued a Notification of Respondent Default on January 26, 2016.

The Center appointed Steven L. Snyder as the sole panelist in this matter on February 2, 2016. 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

On March 10, 2013, a person purporting to be Mark Hnatjuk of Bangkok, Thailand, registered the disputed domain name, <tmobilephones.info>. Respondent then linked the disputed domain name to a website advertising “T Mobile Phones\Smartphones” and offering Internet users the chance to “[g]et the best smartphones available from T-Mobile Phones.”

The T-MOBILE mark belongs to Complainant, which has obtained hundreds of registrations for that mark in the United States of America, the European Union and other political jurisdictions. Complainant has been using this mark since at least August 31, 1996, in connection with telecommunications equipment and services. See, e.g.,United States Patent and Trademark Office (“USPTO”) Reg. No. 2282432 (registering T-MOBILE on October 5, 1999).

5. Parties’ Contentions

A. Complainant

From its headquarters in Bonn, Germany, Complainant oversees a telecommunications business that operates in fifty countries, employs 228,000 employees, and services 151 million mobile customers, 30 million fixed-network lines and more than 17 million broadband lines. Complainant describes itself as “one of the global engines of innovation in the industry.”

For more than twenty years, Complainant has been using the T-MOBILE mark in connection with its products and services. It has acquired domain names that incorporate the mark, such as <t-mobile.com>, <t‑mobile.net> and <t-mobile.org>, and has linked those domain names to websites that advertise its mobile phones, wireless plans and related products and services.

Based on its long and extensive use of the mark, Complainant has obtained registrations for T-MOBILE in the United States, the European Union and many other jurisdictions. Complainant characterizes its mark as being “universally recognized and relied upon as identifying” Complainant.

On November 14, 2014, Complainant sent a letter to Respondent and gave him two weeks to sign and return a “Cease and Desist Declaration” or face the prospect of legal action. The Declaration would have required Respondent to stop using the T-MOBILE mark, to cancel the disputed domain name and to pay a penalty.

Respondent ignored Complainant’s letter. More than a year later, Complainant initiated the present proceeding.

Complainant argues that the disputed domain name, <tmobilephones.info>, is confusingly similar to the T‑MOBILE mark. The deletion of the hyphen between “t” and “mobile” does not lessen the confusion, Complainant maintains, nor does the addition of the word “phones.” That word is merely descriptive of products offered by Complainant.

Complainant maintains that Respondent does not have any rights or legitimate interests in the disputed domain name: Respondent was not commonly known by the disputed domain name prior to its registration; Respondent is not one of Complainant’s authorized dealers or licensees; and Respondent is not making a legitimate, noncommercial or fair use of the domain name. Instead, Respondent has linked the disputed domain name to a website that sells “T-Mobile branded mobile- and smartphones.” Complainant argues that this is not a “bona fide offering of goods or services” and does not give Respondent any rights in the disputed domain name.

Lastly, Complainant argues that the disputed domain name was registered in bad faith. Respondent did not obtain the disputed domain name until March 10, 2013. By that time, Complainant had become “one of the world’s leading mobile telephone providers” and its T-MOBILE mark was “well known on a worldwide basis, especially in the US.” Complainant argues that Respondent was aware of Complainant’s mark when he registered the disputed domain name. After all, Respondent linked <tmobilephones.info> to a website that sold phones bearing the T-MOBILE mark. In Complainant’s opinion, Respondent also used the disputed domain name in bad faith. He was trying to profit off of the likelihood of confusion he had intentionally created.

Complainant contends it is entitled to have the registration for the disputed domain name transferred from Respondent to its possession.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

The expansion of the generic top-level domains (“gTLD’s”) has broadened opportunities for both legitimate businesses and cybersquatters. In this dispute, a multi-national corporation claims that its famous mark has been misappropriated by a cybersquatter and incorporated into a confusingly similar domain name that is registered in the “.info” gTLD.

Under the Policy, Complainant must prove three elements in order to prevail:

(i) That the disputed domain name “is identical or confusingly similar to a trademark or service mark in which” Complainant has rights;

(ii) That Respondent has “no rights or legitimate interests in respect of” the disputed domain name; and

(iii) The disputed domain name was “registered and is being used in bad faith.”

Policy paragraph 4(a).

A. Identical or Confusingly Similar

Complainant undoubtedly has rights in the T-MOBILE mark. It has used the mark for two decades; millions of customers associate the mark with Complainant; and Complainant has obtained hundreds of registrations for the mark in the United States, the European Union and other jurisdictions. See, e.g.,USPTO Reg. No. 2282432.

There is also no doubt that <tmobilephones.info> is confusing similarity to the T-MOBILE mark. Though the disputed domain name and the mark are not identical, the differences are insignificant:

- The deletion of the hyphen.One difference between the disputed domain name and the mark is a hyphen. Complainant’s mark has a hyphen between the letter “T” and the word “mobile.” Respondent’s domain name does not. While the presence or absence of a hyphen between “T” and “mobile” may have been of concern to Henry Higgins and other grammarians, it is of no consequence to the average Internet user and does not avoid a finding of confusing similarity under the Policy. This is shown by the numerous cases dealing with “typosquatters.”

Ruth’s Chris Steak House, Inc. v. Texas Internet, WIPO Case No. D2005-0292 is an example of a typosquatting case. The complainant owned the famous RUTH’S CHRIS mark and the respondent had registered the domain name <ruthchris.com>. In judging whether there was a likelihood of confusion, the Panel considered the “the similarity of sound, appearance and idea suggested by the mark and the domain name.” It rightly concluded that the “slight alphabetical variation” between the mark and the domain name did not prevent them from being confusingly similar. The same is true in our dispute.

- The addition of the word “phones.” The disputed domain name has a word appended to Complainant’s mark. But the addition of the word “phones” does not lessen any possible confusion between Respondent’s disputed domain name and Complainant’s mark. In fact, the use of the word “phones” in the disputed domain name only increases the confusion among Internet users. This is because the word “phones” describes the product most closely associated with the T-MOBILE mark. In the United States alone, approximately 63 million people are subscribed to Complainant’s T-MOBILE-branded wireless phone and data services. Worldwide, Complainant claims to have 151 million mobile customers.

In Amadeus IT Group, S.A. v. Gilbert Li, WIPO Case No. D2015-2065, the complainant had registered the AMADEUS mark in numerous countries based on its use of the mark in the travel industry. The respondent had registered the domain name <amadeusbooking> in several gTLD’s. The complainant argued that the addition of the word “booking” to its AMADEUS mark did not lessen any confusion since the complainant was in the business of booking flights and rooms. The Panel agreed with the complainant’s argument: “The [AMADEUS] trademark is incorporated in whole, and an additional word commonly associated with travel services is appended. The addition of the word ‘booking’ to each disputed domain name does not eliminate confusing similarity. To the contrary, the addition of the word ‘booking’ increases the likelihood of confusion.”

The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark and that Complainant has established the first element required by the Policy.

B. Rights or Legitimate Interests

A respondent may gain rights or legitimate interests in a domain name by using it “in connection with a bona fide offering of goods or services,” by being “commonly known by the domain name,” or by 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.” Policy, paragraph 4(c).

Complainant argues that Respondent has not gained rights or legitimate interests by any of these means. Instead, Complainant portrays Respondent as having incorporated the T-MOBILE mark into the disputed domain name solely in order to profit from the confusion of consumers. Complainant’s argument is based on these facts:

- Respondent created the disputed domain name by combining Complainant’s famous T-MOBILE mark with the word most descriptive of the product associated with that mark;

- Respondent linked the disputed domain name to a website that apparently exists solely to generate income for Respondent; and

- Respondent did these actions many years after Complainant starting using the T-MOBILE mark in connection with phones.

Respondent failed to introduce any evidence to rebut Complainant’s prima facie case. Accordingly, it is appropriate to make a finding that Respondent lacks rights or legitimate interests in the disputed domain name based solely on the evidence introduced by Complainant. See Danish Crown A/S v. Zhao Jiafei, WIPO Case No. D2015-2012 (“the consensus view is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing under paragraph 4(a)(ii) of the Policy”).

Based on the record before it, the Panel finds that Respondent lacks any rights or legitimate interests in the disputed domain name. Complainant has established the second element required by the Policy.

C. Registered and Used in Bad Faith

The Policy sets forth non-exclusive examples of bad faith registration and use. One example is the registration of and use of a domain name in order to attract Internet users to the respondent’s website “by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of” the complainant’s website or of a “product or service” offered via the website. See Policy, paragraph 4(b)(iv).

Respondent intentionally chose a domain name that incorporated Complainant’s famous T-MOBILE mark. He then used this confusingly similar domain name to promote the sale of products and services bearing the T-MOBILE mark. There is nothing in the record to suggest that Respondent’s actions were undertaken with any intent other than to profit from the confusion he had created among the Internet users who were lured to his commercial website in the mistaken belief it was affiliated with Complainant.

The Panel concludes that Respondent registered and has used the disputed domain name in bad faith. See, TASER International, Inc. v. Domain Proxy, WIPO Case No. D2015-2068, (finding bad faith based, in part, on fact complainant had “very strong rights” in “well-known Trade Mark” of which respondent was undoubtedly aware). Indeed, it is fair to say that Respondent misuse of the T-MOBILE mark shows that he matches the profile of a cybersquatter “to a T.”

Complainant has established the third element required by 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 name, <tmobilephones.info> be transferred to Complainant.

Steven L. Snyder
Sole Panelist
Date: February 8, 2016