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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Deutsche Telekom AG v callisto germany.net
Case No. D2000-0951
1. The Parties
Deutsche Telekom AG, Friedrich Ebert Allee 140, D 5313 Bonn, Germany,
represented by Rechtsanwälte Wessing, attorneys at law, Königsallee 92 a, D 40212 Düsseldorf, Germany.
SysNET GmbH, now called "callisto germany.net", Gesellschaft für systematische Netzwerk-Kommunikation mbH, Stresemannallee 30, D 60596 Frankfurt am Main, Germany, represented by Oppenhoff & Rädler, Linklaters & Alliance, attorneys at law, Mainzer Landstr. 16, D 60325 Frankfurt am Main, Germany.
2. The Domain Name and Registrar
The Domain Name at issue is "telekom.com". The Registrar is Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, VA. 20170 USA
3. Procedural History
The Complaint was received by the WIPO Arbitration and Mediation Center (the Center) by hard copy on August 4, 2000, and by e-mail on August 17, 2000, on which date the Center acknowledged the receipt of the Complaint.
WIPO verified that the Complaint satisfies the Rules and the Supplemental Rules and that payment was properly made. The Panel is satisfied this is the case.
On August 24, 2000, the Complaint was properly notified in accordance with the Rules, paragraph 2(a), and the administrative proceedings commenced. On September 12, 2000, a Response was timely filed by the Respondent by e-mail and on September 13, 2000, by hardcopy. On September 17, 2000, the Center acknowledged receipt of the Response.
On September 19, 2000, the Center received a translation of Annex R-15 of the Response.
On October 19, 2000, the Center notified the Parties that an Administrative Panel composed of a single member, Dr. Gerd F. Kunze, had been appointed and that the Panelist had duly submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.
No further submissions were received by the Center or the Panel, the date scheduled for issuance of the Panel’s decision was therefore November 1, 2000.
4. Factual Background
The Complainant was incorporated under its present name Deutsche Telekom AG on January 2, 1995. It is the successor of the national telecommunication provider Deutsche Bundespost Telekom.
The Complainant operates under its trade name "Deutsche Telekom" and under the abbreviated business identifier "Telekom".
The Complainant is the registered owner of a number of German trademarks, containing the word "Telekom" or the word "T.e.l.e.k.o.m" and the device of a post-horn, registered in the years 1991 to 1994:
Telekom Deutsche Bundespost + device (registration no. 1190171 of April 21, 1994, with priority of September 9, 1990)
Telekom Service + device (registration no. 1173306 of March 7, 1991)
T.e.l.e.k.o.m-Homenet + device (registration no. 2028136 of January 15, 1993)
T.e.l.e.k.o.m-Mobilnet + device (registration no. 2028916 of January 27, 1993)
T.e.l.e.k.o.m-Profinet + device (registration no. 2028138 of January 15, 1993)
T.e.l.e.k.o.m-Europa + device (registration no. 2052086 of Dec. 15, 1993)
The Complainant owns the following German trademarks, containing the word "Telekom" or the word "T.e.l.e.k.o.m", registered in the years from 1996:
Deutsche Telekom (registration no. 396 07 816 of May 3, 1996
T.e.l.e.k.o.m (registration no. 396 15 506 of August 14, 1996)
TelekomForum (word mark-registration no. 396 38 958 of September 6, 1996)
Team Telekom (registration no. 396 49 707 of January 27, 1997)
TelekomPlus (word mark-registration no. 396 53 667 of February 3, 1997)
The Complainant owns the following Community Trade Marks:
T.e.l.e.k.o.m (registration no 214619, dated June 15, 1998, application date April 1, 1996)
Deutsche Telekom (registration no. 214643, dated June 15, 1998, application date April 1, 1996)
The Complainant also owns two international registrations:
T.e.l.e.k.o.m (registration no 663775, dated September 30, 1996)
Deutsche Telekom (registration no. 661455, dated August 1, 1996)
However, the Complainant does not own a registered word-trademark of the single word "Telekom".
The Complainant is also the registrant of the domain names "deutsche telekom.de" and "telekom.de" (registered on August 20, 1993) and operates a website under both domain names.
On March 23, 2000, the Complainant sent to the Respondent a cease and desist letter.
The Respondent registered on March 21, 1995, the domain name "telekom.com", under its then name "SysNET GmbH". On July 5, 1995, the Respondent changed its name to "callisto germany.net", Gesellschaft für systematische Netzwerk-Kommunikation mbH, but the change of name was apparently never communicated to Network Solutions.
The Respondent operates under the domain name "telekom.com" a website providing, under the heading "Links zu wichtigen Telekoms in Europa" ("links to important Telekoms") for users of the website links to several telecommunication companies, containing the word" telekom" (such as www.telekom.at, and also www.telekom.de).
At the same website, the Respondent additionally provides links to some further "Telecoms", such as Swisscom and some other telecommunications companies, having domain names, which contain the word "telecom" (such as www.telecom.it). Furthermore, it is mentioned at the bottom of the website that this website is powered by "germany.net" (the Respondent).
By letter dated March 31, 2000, the Respondent replied to the the Complainant’s letter , dated March 23, 2000, and refused to cease using the domain name "telekom.com". At the same time he undertook unilaterally to connect the domain name "telekom.com" to a website which contains links to the Complainant and to other telephone companies. In fact, Respondent’s website contains, amongst others, a link to the Complainant.
5. Parties’ Contentions
Complainant submits that (1) the domain name "telekom.com" is confusingly similar to a trademark or service mark in which Complainant has rights; (2) Respondent has no rights or legitimate interests in respect of the domain name; (3) the domain name was registered and is being used in bad faith.
Respondent asserts that (1) the domain name is not identical or confusingly similar to a trademark in which Complainant has rights; (2) he has rights and/or legitimate interests in respect of the domain name; (3) the domain name has been registered and is being used in good faith.
6. Discussion and findings
Paragraph 4(a) of the Policy lists three elements that Complainant must prove to merit a finding that the domain name of Respondent be transferred to the Complainant or be cancelled:
1) the domain name is identical or confusingly similar to a trademark or service mark ("mark") in which the Complainant has rights; and
2) the Respondent has no rights or legitimate interests in respect of the domain name; and
3) the domain name has been registered and is being used in bad faith.
1) Confusing similarity with a mark in which the Complainant has rights
Complainant has used, since 1989, the term "Telekom" as a business identifier ("Unternehmenskennzeichen) and the Panel is convinced that Complainant has rights in that business identifier. Consequently, there is a clear legal basis for a Complaint under German Trademark Law.
However, under the Policy, Complainant must have rights in a mark. While Complainant is the registered owner of a great number of marks, containing the term "Telekom" and also of the mark "T.e.l.e.k.o.m", he has no registration of the word "Telekom" as a word mark.. However, German Trademark Law also recognizes rights on unregistered marks on the condition that they have acquired distinctiveness:
First of all, there is no doubt that "Telekom" is not a generic term, such as "Bank" or "Auto". The generic term in this context which is not capable of distinguishing goods or services is clearly "Telekommunikation" (in German) or "Telecommunication" (in English). Nothing to the contrary can be deduced from the comments of Fezer in No. 206 to § 3 Trademark Law (Annex R8). Fezer also underlines that generally one has to assume the so-called abstract capability of a mark to distinguish. "Telekom" must therefore be considered a descriptive term, even not as a term which is devoid of any distinctive character. Under the latter category of the EC Directive (and German Trademark law) only terms should be subsumed which, independently from the goods or services for which they may be used, are not distinctive, such as "excellent", "fair offer" etc.. "Telekom" would clearly be inherently distinctive for fresh fruit, such as apples, in the same manner as "Apple" is inherently distinctive for Computers. "Telekom", therefore, can only be considered to be descriptive for the goods or services for which rights are claimed, and such descriptiveness can clearly be overcome by use.
There are strong indications in the documents submitted by Complainant that he has acquired rights in the unregistered mark "Telekom" (and these indications are not contradicted by the documents submitted by Respondent). Both a decision of the county court (Landgericht) Hamburg (Annex W 11 to the Complaint) and of the German Patent Office (Annex W 12) recognize the term "Telekom" as a famous mark ("berühmte Marke") of the Complainant. This is remarkable since, as a legal basis for a decision in favor of the Deutsche Telekom AG, it would have been sufficient in these cases to find that the term "Telekom" had become distinctive for goods and services offered by the Deutsche Telekom AG (the goods and services of the respective competitors were similar). The results of the public opinion poll, submitted by the Complainant (Annex W 8) also speak in favor of the finding that the Complainant can rely on acquired distinctiveness for his mark "Telekom" and even enjoys a certain degree of reputation (for the purposes of the Policy, Complainant need not prove any reputation in his mark;it is sufficient that he has rights in the mark). It may be added on this occasion that Respondent’s argument that the use of the term "Telekom" by Complainant could lead only to its overcoming its lack of distinctiveness, but could not add to its reputation (sec. 18 of the response) is not supported by the authors referred to in Annexes R 11 and R 12. It is this Panel’s opinion, beyond any doubt, that an originally very weak, even descriptive, term can, by the use made of it, not only become distinctive, but even become well-known in a country or even internationally. There is no rule in any trademark law to the contrary.
Furthermore, it is not correct when Respondent refers to numerous registrations of "Telekom"marks and numerous companies having been licensed as "Telekom" companies by the German Regulation Office for Telecommuncation. If one studies the annexes to the Response R 4 to R 7 more closely, it appears that, contrary to registrations containing the term Telecom", registrations containing the term "Telekom" in great majority belong to the Complainant (not only in Germany, but also in Europe). Also Annex R 10 of the Response speaks rather in favor of the Complainant. There are a great number of companies listed which use the generic term "Telekommunikation" in their trade name, and a small number of companies using the descriptive term "Telecom", in which the Complainant does not claim to have acquired rights. However, the only company in this listing of several hundred telecommunications companies using the term "Telekom" as part of its trade name is the Complainant. There is therefore a strong indication that despite the opening of the telecommunications market in Germany, in practice, the term "Telekom" continues to refer, in Germany, to the Complainant and its goods and services and not to any other telecommunications company (without any sensible decrease of recognition). That the Complainant uses this term and not only the term "Deutsche Telekom" is obvious; one need only glance at its website www.telekom.de. However, its clients as well as the public in general also use this term. This cannot be deduced only from the public opinion poll submitted by Complainant as Annex W 8, but also from a glance at the daily newspapers. When reading newspapers on October 24, 2000, the Panelist found references (without particularly searching for such references) to the Complainant’s use of the term "Telekom" (and not: Deutsche Telekom) in the "Frankfurter Allgemeine Zeitung" and in the "Welt", two leading German newspapers. In the Welt, "Telekom" was referred to in the first article on page 1 (talking at the same time about the telecommunications sector and not about the "Telekom sector"). Other recent examples which the Panelist saw by chance on the same day are an article about the Complainant in "Media Di@log," a magazine for future business (1/2000 October/November), where several times the term "Telekom" is used in reference to the Complainant and its services, and an article in the magazine "Bunte," (No. 44/2000, page 84). In other words, it seems difficult to find a newspaper or some other periodical on the German market in which Complainant is not referred to somewhere as "Telekom". Even if these facts were not submitted by Complainant, they simply illustrate the personal knowledge of the term "Telekom" as used in Germany with by the Panelist standing in for the knowledge of the average consumer (if even the Panelist, residing in Switzerland, is occasionally exposed to such references, the more should it be the average consumer in Germany).
Also, the fact that the Duden, Rechtschreibung der deutschen Sprache does not refer to "Telekom" as registered mark does not help the Respondent. Actually, the Complainant had no reason (and no legal ground) for requesting such reference, since the reference in the Duden to the term "Telekom" does not give the impression that it is a descriptive term, as required by German Law as a condition for a claim by the trademark owner. On the contrary, the most recent Duden (21. Edition of 1996; Annex W 9) states that "Telekom" stands in short for the Deutsche Telekom AG, an enterprise in the telecommunications sector (and the 20. Edition of 1992, Annex W 10, of the Duden stated: an undertaking of the Deutsche Bundespost). The references to "Telekom" in the Duden, therefore, speak in favor of the Complainant as a further indication that "Telekom", in Germany, is understood as a reference to the Complainant and its goods or services.
The Panel therefore assumes that Complainant has rights in the (unregistered) word mark "Telekom" and that the domain name "telekom.com" of Respondent must be considered to be identical. Applying the similarity test, the suffix ".com", which indicates the gTLD in which the domain name is registered cannot be taken into consideration since otherwise a domain name would practically never be identical to a protected trademark. Anyhow, beyond any doubt, the domain name "telekom.com" is confusingly similar to the term "Telekom", in which the Panel is convinced the Complainant has rights.
Independently from these findings, the domain name "telekom.com" must be considered to be confusingly similar (at least orally, which is sufficient according to general principles of trademark law) with some of the registered marks of the Complainant. The registration "Telekom Deutsche Bundespost + device" (registration no. 1190171 of April 21, 1994, with priority of September 9, 1990) contains prominently the term "Telekom" and the "post-horn" device (The text "Deutsche Bundespost" is written in very small letters). While the device referred to the whole undertaking, Deutsche Bundespost (it is still today used by the Deutsche Bundespost), the term "Telekom" referred to its telecommunications business. The reference "telekom" in Respondent’s domain name was, therefore, likely to be understood as a reference to the telecommunications business of the former Deutsche Bundespost, known under the term "Telekom". Again, for the reasons explained above, it cannot be considered that "Telekom" is purely descriptive and therefore free for anyone to use, including using it as a mark ("zeichenmässiger Gebrauch").
Even more apparent is the confusing similarity of Respondent’s domain name with the mark T.e.l.e.k.o.m (registration no. 396 15 506 of August 14, 1996). The domain name has no priority right to that registration, since a simple registration of a domain name establishes no rights under trademark law or any other legal grounds. Respondent could have acquired a prior right only by such a use of the domain name that would have made it an identifier of his business (such use has not been made, since the Respondent still uses the domain name only as an identifier of his website, which transfers the user automatically to his "www.germany.net" domain).
In that context, the position of the Complainant is further reinforced by the fact that he is the owner of all the other marks listed under sec. 4 of the Complaint and that he apparently rigorously (and successfully) defends his rights against the use of the term "Telekom" by competitors (as documented by Annexes W 11, 12 and 13).
In conclusion, the Panel considers that Respondent's domain name is confusingly similar to a mark in which Complainant has rights, at least in Germany. Under the Policy, this is sufficient. The Complainant need not prove rights in more than one country, and it plays no role that in some other jurisdiction some other person the Respondent may also have rights in the term "Telekom" (a fact which is claimed, but not proven by Respondent).
2) Rights or legitimate interests in respect of the domain name
As already said above, the registration of a domain name as such does not constitute a right. Also the "fact," if proven, that "Telekom" is a "generic" respectively descriptive abbreviation, does not constitute a right in the registration and use of the domain name "telekom.com". On the contrary, if one were of the opinion that nobody should be able to register "generic" terms as second level-domains (a question raised by the Respondent) this would also mean that the Respondent, in particular, would not have a right to register that domain name. Actually, there are no established rules as to the treatment of descriptive terms in the context of domain name registrations; therefore, the Respondent cannot derive any argument in his favor from the assumption that "Telekom" is generic or descriptive.
The policy gives examples of uses of a domain name, which would be considered sufficient to demonstrate rights and legitimate interests. The first example, referring to the offering of goods or services, does not apply. The Respondent, himself, underlines that he makes only a noncommercial use. Also, the Respondent is commonly known under his name or under his website "germany.net" to which the domain name "telekom.com" automatically switches, however, not under this domain name, itself.
It remains to considered whether or not the Respondent makes 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.
Under that aspect, the Policy does not raise the question as to whether Respondent registered the domain name with the intention of making a legitimate noncommercial or fair use, but whether he actually makes such use.
In that context, it must be considered that a major shareholder of the Respondent is a competitor of the Complainant. This competitor might have an interest in the website used at present by Respondent under the domain name "telekom.com", which provides links to other competitors of Complainant and, therefore, may divert consumers and, to a certain extent, tarnish Complainant’s mark. However, it is not possible, within the context of the present proceedings, and based on the arguments submitted by the parties, to arrive at a finding that such interests exist and that a corresponding influence is exercised by Respondent’s shareholder.
Therefore, even if it is difficult to believe that a company having its seat in Germany, the country where Complainant mainly operates, pursues such altruistic aims as put forward in the Response under II and III, there are indications that Respondent may be making a legitimate noncommercial or fair use of the domain name. At least such users of the Internet who wish to find information on companies in Europe active in the telephone business and who try to find such information under the domain name "telekom.com" (instead e.g. to use Yahoo) will be provided with such information. A user, who simply intended to access the Complainant’s website, ignorant of the fact that Complainant has his domain names registered in the ".de" ccTLD and not in the ".com" gTLD, will at least also find the link to the Deutsche Telekom AG and is unlikely to be detracted by competitors of the Complainant, located in other European countries, by the links also leading to these companies.
It is therefore doubtful whether, under the Policy, and within the limited jurisdiction given to the Panel, the Respondent can be denied any legitimate interests in his domain name.
Nevertheless, it may be mentioned (sec. 19 of the Response) that Respondent’s use of the domain name "telekom.com" cannot be regarded as use in a reference book. Such use must, under German Trademark Law, be tolerated as a use which is not in the course of trade. Respondent does not use the term "telekom.com" in a "reference book", but rather as an identifier (which rather might be compared with the title) of that "reference book," i.e. his website.
Furthermore, it is simply wrong to state that use of the word "telekom" in the ".com" gTLD could not infringe national trademark rights. In that context, it should be mentioned that about 60 % of all domain names are registered in the".com" gTLD. US-companies, in particular, generally register in that domain and not in their national domain. If the Respondent were right, there could not be any conflict between the use of a domain name in the ".com" gTLD by a US-based company and a trademark right held by another US-company. As a matter of fact, the largest number of all domain name disputes arise between American companies.
In conclusion, it is a borderline question as to whether, under the circumstances, as submitted by the parties a legitimate interest of the Respondent in using the domain name "telekom.com" can be denied. Under the Policy, the Respondent does not have to fully prove a legitimate interest. It is up to the Complainant to prove that there is no such interest for the Respondent to use the domain name for his promotional service purposes. Nevertheless, it must be recognized that for the Complainant such negative proof is often difficult and, therefore, the requirements of proof cannot be too strict. Finally, a decision in favor or against the Respondent need not be taken on that question of legitimate or fair use, since the Panel arrives at a clear conclusion on the question of bad faith.
3) Registration and use in bad faith.
The Panel is of the opinion that the facts put forward in the Complaint and in the documents submitted do not establish, in a sufficient manner as requested by the Policy, a clear finding that Respondent has both registered and is using his domain name in bad faith.
When, in March 1995, the Respondent registered the domain name "telekom.com", he was independent, and no competitor of the Complainant was a shareholder (as proven by Annex R 15 of the response). As the Respondent points out, without being disputed by the Complainant, the domain name was never offered for the purpose of selling, renting or otherwise transferring it to a third party. At the time of registration of the domain name in dispute, the Complainant, respectively the Deutsche Bundespost, already owned the domain name "Telekom.de", registered in August 1993 (Sec. 24 of the Complaint). Apparently the Deutsche Bundespost was not interested in a domain name in the ".com" gTLD. It is therefore also difficult for Complainant to prove that Respondent registered the domain name in order to prevent the owner of the mark "Telekom" from reflecting it in a corresponding domain name (even if Respondent may have considered, in the context of the foundation of Deutsche Telekom AG that the newly established company might be interested in the domain name "telekom.com", this is speculation which is not founded in fact). There are also no facts which would be sufficient to indicate that Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor (the Complainant).
Also the conditions of 4(b)(iv) of the Policy do not seem to apply, since the Respondent does not use his domain name for commercial gain (even if he does, in the Panels opinion, use his domain name in the normal course of trade, since he offers a service as provider to his clients, he does not make any commercial gain with that offer. Rather, he uses the domain name for promotional purposes).
The situation would no doubt be different if Respondent had chosen the domain name "Deutsche Telekom.com", or if Complainant had chosen a more distinctive business name which is not used in other countries by other companies in the telecommunications business (such as "Swisscom," chosen by the Swiss telecommunications company, which emerged from the Swiss Federal mail Service), and the Respondent had registered that business name as a domain name in the ".com" gTLD.
Since "Telekom" is being used by other telecommunications companies in some countries in Europe and even beyond (Malaysia), there are not enough findings in the arguments of Complainant which would sufficiently support the claim that Respondent has registered and uses the domain name "telekom.com" in bad faith.
Nevertheless, there are indications that Respondent uses the domain name in a manner which may be considered by a court as infringing the rights of the Complainant in his mark. Respondent’s website is apparently designed for German users (therefore all of Respondent’s arguments as to the international application of the ".com" gTLD, contrary to the ".de" ccTLD, are contradicted by his own use of the domain name "telekom.com"). Instead of using a heading, which one would expect for an international use of his domain name and website (which could also attract internet users in other countries where a local telecommunications company uses the term "Telekom" in its business name, such as "Links to important Telekoms", or even better "Links to important telecommunications companies"), Respondent uses the German language heading: "Links zu wichtigen Telekoms in Europa." He also provides, beneath each of the links shown, a hint as to the respective country of the respective telecommunication company in the German language. Contrary to this practice, the website of the Austrian "Telekom" (to be found under the domain name "telekom.at") is written in English, even for Austrian clients of the company! Independently from the question of whether, under the applicable national law, the domain name "telekom.com" infringes Complainant’s rights, thereis also the question as to whether use of the sign "Telekom" respectively "Telekoms" on the Respondent's website infringes Complainant’s rights. Of course, no use of a sign on the Internet can be considered as use in all countries. Where rights in similar signs may exist, there must be some connection to the respective jurisdiction. This connection to Germany is, in the present case, given by the very fact that Respondent uses the German language on his website in the ". com" gTLD. If one assumes that Complainant has rights in the term "Telekom" in Germany, these rights may therefore be infringed by the use of that term (instead of the German term "Telekommunikation") on Respondent's website. However, infringement of a right by use of a sign on a website is clearly outside the scope of the policy for a Panel decision.
As previously stated, these indications are not sufficient to establish beyond doubt that Respondent registered and is using the domain name "telekom.com" in bad faith.
The Panel decides that the domain name "telekom.com" should not be transferred to the Complainant.
The Panel decision should not be read as a substantive decision on the merits of any trademark infringement claim the Complainant may choose to bring in court under the applicable national law, where the Complainant need not prove that Respondent registered and is using the domain name in bad faith. The question of whether the Respondent infringes trademark or trade name rights of the Complainant raises, in the present case, difficult questions of application of national law which are outside the scope of this decision.
Dr. Gerd F. Kunze
Dated: November 1, 2000