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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Deutsche Telekom AG v. Technology Online Mobile

Case No. D2003-0382

 

1. The Parties

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

The Respondent is registered as Technology Online Mobile of Barcelona, Spain. The Respondent is, however, an individual, Mr. Xavier Sardans Ramon, who has only used the name Technology Online Mobile in the database of the Registrar.

 

2. The Domain Name and Registrar

The disputed domain name <t-online-mobile.com> is registered with iHoldings.com Inc., d/b/a DotRegistrar.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 19, 2003. On May 19, 2003, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain name at issue. On May 19, 2003, iHoldings.com Inc. d/b/a DotRegistrar.com transmitted by email to the Center its verification response confirming that the 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"), 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 May 22, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was June 11, 2003. The Response was filed with the Center on June 10, 2003.

The Center appointed Peter G. Nitter as the sole panelist in this matter on June 20, 2003. 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 domain name <t-online-mobile.com> was registered by the Respondent on December 22, 2001.

The Complainant is one of the largest telephone companies in Europe, and covers the entire spectrum of telecommunications.

The Complainant is the proprietor of the German trademark no. DE30010266 T-ONLINEMOBILE, and the International Registration no. IR00740939, which is based on the national German trademark and designates, among other countries, Spain. The trademarks are registered for several classes, ref. Annex C1 to the Complaint.

The Complainant is the proprietor of a 542 trademarks containing the term "t-online" registered in numerous countries world-wide, for several classes, ref. Annex E, F, G1 and G2 to the Complaint.

The Complainant has also registered "t-online-mobile" as a domain name in relation to 30 country code top level domains as well as under the four generic top-level domains .net/.org/.biz/.info, ref. Annex C3 to the Complaint.

The Complainant has also registered several top-level domain names including "t-online".

The Complainant is also the registered proprietor of 136 domain names for numerous country code and generic top level domains, which include the terms "t" / "online" / "mobile" (in this order), ref. Annex C4 to the Complaint.

The company T-Online International AG is a subsidiary of Deutsche Telekom AG, and is a leading European Internet provider and Internet media networks. T-Online International AG has more than 11 million subscribers in major European markets. In 2001, this company achieved sales of approximately 1.15 billion Euro.

T-Online is the corporate name under which the Complainant’s business in this sector is conducted in Germany, Austria and Switzerland.

The mobile communication activities of the Deutsche Telekom Group have been bundled in the Complainant’s division T-Mobile International AG&Co. KG ("T-Mobile"). T-Mobile is the corporate name under which the Complainant’s business in the mobile communications sector is conducted in Germany as well as in the US, Austria, Czech Republic, The Netherlands, Poland, Russia and the United Kingdom.

The Complainant has registered national and international trademarks reflecting the term "T-Mobile", ref. Annex I and J to the Complaint.

The Complainant has registered and actively uses a number of top-level domains containing "T-Mobile".

 

5. Parties’ Contentions

A. Complainant

Confusingly Similar

The domain name <t-online-mobile.com> is confusingly similar to the Complainant’s T-ONLINEMOBILE, T-ONLINE and T-MOBILE trademarks.

Rights or Legitimate Interests

The Respondent does not fulfill any of the circumstances indicated in paragraph 4(c) of the Policy that would indicate rights to, or legitimate interests in the use of the disputed domain name.

The Respondent is not and never has been a representative or licensee of the Complainant, nor is the Respondent otherwise authorized with regard to the Complainant’s trademarks.

Even though the current company name of the Respondent is "Technology Online Mobile", paragraph 4(c)(ii) does not apply. The Respondent has not been commonly known by the disputed domain name.

Xavier Sardans Ramon, the administrative and technical contact for the disputed domain name, re-named his business after having received warning letters from the Complainant. Originally, the business had been called "Xavier NetFirms". On December 22, 2002, its name was changed to "Technology Online Mobile", ref. Annex A1 and A2 to the Complaint. The firm tried to evade its responsibility as well as construct a façade in case proceedings should be initiated as threatened by the Complainant in its warning letters.

Paragraph 4(c)(iii) does not apply, there is no noncommercial or fair use of the domain name.

Before receiving the warning letters from the Complainant, the Respondent re-directed Internet users from the website at "www.t-online-mobile.com" to the site "www.worldonmobile.net", which was operated by the Respondent, ref. Annex L to the Complaint. The last mentioned site contains information about mobile technology and links to topics such as "tickets", "date", "advertise", "games" and "movies", which all lead to an overview of commercial websites, ref. Annex M to the Complaint.

After the warning letters the re-directing was stopped. The Respondent now actively uses the domain name <t-online-mobile.com> for a seemingly independent Internet presentation, which is only a copy of the original site at "www.worldonmobile.net", with the modification that the links were taken out.

The original re-direction can be re-installed at any time, and Internet users can thereby be mislead by the Respondent in order to gain a commercial profit.

The Respondent has no right to or legitimate interest in the use of the domain name in dispute.

Bad Faith

The circumstances in paragraph 4(b)(iii) are fulfilled. The Respondent has intentionally used the domain name <t-online-mobile.com> to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s trademarks.

Due to the fame and reputation of the Complainant’s marks T-ONLINEMOBILE, T-MOBILE and T-ONLINE, it is evident that the disputed domain name was registered with these trademarks in mind and for the purpose of diverting Internet users in search of information on services provided by the Complainant.

The re-direction between the Internet pages as mentioned shows that the Respondent used the disputed domain name to increase user traffic on the "www.worldonmobile.net" website.

The copying of the contents provided on the "www.worldonmobile.net" website to the "www.t-online-mobile.com" site after having been warned by Complainant, is a strong indication that the domain name was chosen by Respondent for illegitimate reasons.

This is all the more evident since the Respondent is active in the field of telecommunications, and it may therefore be presumed that the Respondent was well aware of the Complainant’s trademarks and the company behind them.

Bad faith is also indicated by the fact that the Respondent refused to react after receiving a total of three warning letters.

The Respondent’s previous name was "Xavier NetFirms", ref. Annex A2 to the Complaint. The Respondent changed its company name to "Technology Online Mobile" after the Complainant had sent a warning letter.

The Respondent’s reaction of changing its company name twice within a short period, proves that he was aware of the implications that might result from using the disputed domain name.

The disputed domain name has therefore been registered and is being used in bad faith.

B. Respondent

Confusingly Similar

The trademark T-ONLINE is composed by two generic words, "T" & "Online", and they are combined in a very commonly used formula as typing hyphens "-".

The expression "-online" is commonly used to designate goods or services, defined by the characters typed before hyphens "-" to be offered electronically on the Internet. The Complainant’s mark is merely descriptive, where "T-" can be understood as many different meanings.

There are numerous third party users of domain names that are very similar to "t-online".

The trademark T-MOBILE is also composed of two generic words, "T" and "Mobile". "Mobile" is commonly used to designate goods or services related with the mobile phones or mobile technology. Complainant’s mark is merely descriptive.

There are numerous third party users of domain names that are very similar to "t-mobile".

"Online Mobile" is commonly understood as goods or services related with the mobile or wireless Internet technology. There are numerous third party users of domain names that are very similar to the trademark T-ONLINEMOBILE.

Bad Faith

The Respondent states that when he registered the domain name, he was searching for a domain name that described the future content of the site, that is related with mobile Internet technology. The domain name is an abbreviation of the concept Technology Online Mobile.

The Respondent states that when he registered the domain name, the Complainant’s trademarks had not been advertised in Spain, neither as trademarks or corporate names.

When registering the domain name the Respondent was not active in the field of mobile Internet technology, or at least not more active than a normal Internet user receiving technological newsletters.

At the time of registration the Respondent was not aware of the trademarks, and became aware of this first after receiving the first warning letter, October 2, 2002, a year after the registration.

Rights or Legitimate Interests

The Respondent fulfills all three circumstances in paragraph 4(c) of the Policy.

The Respondent used the domain name <t-online mobile.com> to access the site "www. worldonmobile.net". This site tries to give a summary about the new incoming mobile Internet technology and its applications in different categories. The site also contains links to other sites.

The Respondent states that he is Xavier Sardans Ramon as an individual, and that he never had any company or business. The names "Xavier NetFirms" and "MyDomain Direct II" and "Technology Online Mobile" were just names that the Respondent used to organize and identify the profiles in his register account at DotRegistrar.com.

The changes were not undertaken because of the warning letter from the Complainant. The website at "www.t-online-mobile.com" has not been modified or renamed.

During the last 11 months there have been more than 8,000 visits to the sites "www.t-online-mobile.com" and "www.worldonmobile.net". This proves that the Respondent has been commonly known by the disputed domain name.

The Respondent is not using the domain name for commercial gain to misleadingly divert consumers. The links on the site of the domain name is only search fields. This can not be considered a commercial use.

Bad Faith

The Respondent has never tried to sell, rent or otherwise transferring the domain name to the Complainant.

The Respondent states that since he did not register other domain names including the Complainant’s marks shows that he did not want to prevent the owner from reflecting the mark in a corresponding domain name. He was just searching for a domain name for his future website.

The Respondent insists that he does not have any company, and that he is not active in the field of telecommunications or selling any services or products.

The use of a search engine field is not a commercial use.

Respondent did not react against the warning letters from Complainant, and this can not be considered as bad faith, because they were authoritative demands without any alternatives other than transferring the domain name.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three tests, which a complainant must satisfy in order to succeed. A complainant must satisfy that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of such domain name; and
(iii) the domain name has been registered in bad faith and is being used in bad faith.

A. Identical or Confusingly Similar

It is indisputable that the domain name <t-online-mobile.com> is confusingly similar to the Complainant’s T-ONLINEMOBILE trademark. The addition of a hyphen in the domain name does not decrease the confusing similarity between the domain name and the mark.

The second question is if the domain name is confusingly similar to the T-ONLINE trademark. "Online" is a descriptive term, but the "T" in front makes the mark more distinctive. The T-ONLINE mark is incorporated in its entirety in the domain name. The Panel finds that the domain name also is confusingly similar to the T-ONLINE mark.

The third question is if the domain name is confusingly similar to the "T-Mobile" trademark. "Mobile" is also a descriptive term, and also for this mark the "T" makes it distinctive. But the difference is that in the domain name there is a word in between the "T" and the word "Mobile". This difference is significant, and the Panel does not find that there exists confusing similarity between the "T-Mobile" trademark and the domain name.

Thus the Panel finds that the domain name in question is confusingly similar to two trademarks in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant is the registered proprietor of the trademarks T-ONLINEMOBILE and T-ONLINE. The Annex C to the Complaint shows that the Complainant has registered the trademark T-ONLINEMOBILE in year 2000. The mark T-ONLINE has been registered in 1996, in Spain, ref. Annex F to the Complaint.

The Respondent claims that his site that summarizes facts regarding mobile Internet technology, is a legitimate use, and that he as an individual does not have any business. The Panel does, however, find that the website operated under the domain name contains commercial content ref. Section B below.

The Respondent claims to be commonly known by the name "t-online-mobile" because he has had 8,000 visits to the site during the last 11 months. In the Panel’s opinion this proves quite the opposite. The Complainant’s trademarks were registered much earlier than the last 11 months. It is therefore more likely that the traffic on the site is due to the fact that people know about the trademarks. It is less likely that the reason for the traffic is that a private person has made his web site known to the public in a quite short period of time.

The Respondent is neither an authorized distributor of products from the Complainant nor has been licensed to use any of Complainant’s marks.

This Panel finds that sufficient evidence of Respondent’s rights or legitimate interests is not presented.

C. Registered and Used in Bad Faith

There is no evidence that the Respondent has tried to sell, rent or otherwise transfer the domain name to the Complainant.

The fact that the Respondent has not registered other domain names including Complainant’s marks does not alone prove any good or bad faith.

The Respondent claims that the Complainant’s trademarks had not been advertised in Spain, and that he was not aware of those before receiving the first warning letter of October 2, 2002. The Panel finds that this is unlikely due to the facts that:

- The Complainant operates a large number of top-level and country code domain names which contain Complainant’s marks

- The Respondent is well informed in the telecommunication sector.

The Panel therefore finds that the Respondent most likely knew about one of the two trademarks T-ONLINEMOBILE or T-ONLINE. This is supported by the fact that "t-online-mobile" is an invented combination of a letter and two words.

There are also several other facts that indicate bad faith. The Panel notes that the factors found in paragraph 4(b) of the Policy are "without limitation" and as such, the Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith.

Firstly, the Respondent refused to react after receiving a total of three warning letters. This clearly indicates that the domain name was chosen by the Respondent for illegitimate reasons. The Respondent can not be heard with the excuse that the he would not answer the letters because they were formulated in a demanding way.

Secondly, the Respondent has used other names than his real name when registering and upholding the disputed domain name, and thereby made his identity unclear. This applies even more because of the changes of the name used. The Respondent can not be heard when he claims that he used the different names to organize and identify profiles in his register account at the Registrar.

Thirdly, it is evident that the website operated under the disputed domain name contains commercial content. If one enters the site, one will experience many pop-ups (banners), with advertisements. The site also contains links to other sites with advertisements.

The Panel therefore concludes that the Respondent intentionally has used the domain name to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s trademarks.

The Panel finds that the use of the domain name by the Respondent inevitably, and to the Respondent’s knowledge, will lead people to believe that the Respondent and the Respondent’s site in some way are associated with the Complainant.

The Panel concludes that the domain name was registered and 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 name <t-online-mobile.com> be transferred to the Complainant.

 

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Peter G. Nitter
Sole Panelist

Dated: July 4, 2003