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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Deutsche Telekom AG v. SKK

Case No. D2003-0744

 

1. The Parties

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

The Respondent is SKK, Los Angeles, California, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <t-onlinetv.com> is registered with Tucows.

 

3. Procedural History

A Complaint was submitted by e-mail to the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on September 22, 2003, and in hardcopy on September 26, 2003. An Acknowledgement of Receipt was sent by the Center to the Complainant, dated September 23, 2003.

On September 23, 2003, a Request for Registrar Verification was transmitted to the Registrar. On September 23, 2003, Tucows transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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, as approved by ICANN on October 24, 1999, (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy, in effect as of December 1, 1999, (the "Supplemental Rules"). The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.

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 October 2, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was October 22, 2003. The Response was filed with the Center on October 19, 2003.

The Center appointed Jonas Gulliksson as the sole panelist in this matter on November 4, 2003. The Panel finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules. 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. The Administrative Panel shall issue its decision based on the Complaint, the Response, the Policy, the Rules, and the Supplemental Rules.

 

4. Factual Background

The Complainant and its Registered Trademarks

The Complaint is based on the German registered trademark T-ONLINE TV (registration No. DE30209806 / priority date February 27, 2002). A true and correct copy of the entry in the trademark register is provided as Annex D to the Complaint.

The Complaint is also based on the international trademark T-ONLINE (registration no. IR650171 / priority date September 27,  1995) and the international trademark T-ONLINE (registration no. IR763492 / priority date September 14,  2000). A true and correct copy of the entry in the trademark register is provided as Annex E and F to the Complaint.

In addition, the Complainant is – inter alia – holder of the European Community trademark T-ONLINE (registration no. EM214528 / priority date April 1, 1996), of the German trademark T-ONLINE (registration no. DE39539437 / priority date September 27, 1995). Corresponding data base print-outs are provided as Annex G to H to the Complaint.

These T-ONLINE TV and T-ONLINE trademarks are registered among others for the following goods and services:

- CL09: Electric, electronical, optical, measuring, signaling, controlling or teaching apparatus and instruments (as far as included in class 9); apparatus for recording, transmission, processing and reproduction of sound, images or data; machine run data carriers; automatic vending machines and mechanism for coin operated apparatus; data processing equipment and computers.

- CL16: Printed matter; instruction and teaching material (except apparatus); stationery (except furniture).

- CL36: Financial services; real estate services.

- CL37: Services for construction; installation maintenance and repair of equipment for telecommunication.

- CL38: Telecommunication services; rental of equipment for telecommunication, especially for radio and TV.

- CL41: Instruction and entertainment services; organization of sporting and cultural events; publication and issuing of printed matter.

- CL42: Computer programming services; data base services especially rental of access time to and operation of a data base; rental services relating to data processing equipment and computers; projecting and planning services relating to equipment for telecommunication.

The Complainant is registrant of the following – among others – domain names: <t-onlinetv.net/ .org/ .info/ .biz/ .de/ .at/ .ch/ .fr> as well as <tonline.com/ .net/ .org/ .info/ .biz/ .de>.

The domain name <t-onlinetv.com> was registered by the Respondent on May 8, 2002.

 

5. Parties’ Contentions

A. Complainant

(1) The Domain Name is Identical or Confusingly Similar to a Trademark in which Complainant has Rights

The domain name <t-onlinetv.com> is identical to the trademark T-ONLINE TV in which the Complainant has rights, since the generic top-level domain ".com" after the name is not relevant (compare: WIPO Case No. D2000-0493 – POME-TELLATO and NAF Case No. 137221 – ANN COULTER).

It is furthermore confusingly similar to the T-ONLINE trademarks described above in which the Complainant has rights, since the mere addition of the generic term "tv" does not preclude a finding of confusing similarity. It is well-established under the Policy that a domain name composed of a trademark coupled with a generic term still is confusingly similar to the trademark (compare: NAF Case No. 141825 – <chemyahoo.com>; WIPO Case No. D2002-0367 – <experianautomotive.com>).

(2) Respondent has No Rights or Legitimate Interests in the <t-onlinetv.com> Domain Name

The Respondent does not fulfil any of the circumstances indicated in section 4(c) of the Policy that would indicate rights to or a legitimate interest in the use of the disputed domain name, nor is such a right or interest apparent from any other facts.

A right to the disputed domain name can certainly be excluded – the Respondent is not and never has been representative or licensee of the Complainant, nor is the Respondent otherwise authorized with regard to the Complainant’s trademarks.

The Respondent also does not use the domain name <t-onlinetv.com> for a bona fide offering of goods or services and is not making a legitimate non-commercial or fair use of it. The domain name is rather used for domain parking, as is evident from the fact that it says in prominent letters at the top of the page "This domain is for sale!" and because of the indication at the bottom of the page "© 2003 Trafficz. A service provided by Trafficz.com" (compare print-out of the web-site enclosed as Annex I to the Complaint). Trafficz is a company that creates domain parking solutions, as can be seen from the printout of its homepage submitted as Annex J to the Complaint. Domain parking has the sole purpose of the domain being put up for sale, while until it is sold money is made through the ads that are posted on the site. In the case at hand, these ads are interest related and posted after choosing from a wide range of topics such as computers, education, shopping or health. It is thus obvious that the Respondent is not using the domain in dispute in a manner that constitutes a legitimate interest as laid out in section 4(c) of the Policy.

The Respondent therefore has no right to or legitimate interest in the use of the domain name <t-onlinetv.com>.

(3) Respondent Registered and is Using the <t-onlinetv.com> Domain in Bad Faith

The Respondent registered and used the domain name in dispute in bad faith, since it registered and used the domain name primarily for the purpose of selling the domain name registration, as is clear from the sales offer on the website. This alone constitutes bad faith, as held in numerous panel decisions (among others in: WIPO Case No. D2000-0237 – <babycreysi.com> and <creysibodega.com>; WIPO Case No. D2000-0297 – <natureswindow.com>; WIPO Case No. D2000-0308 – <oxford-university.com>).

In addition, bad faith is also established, because after the Complainant contacted the Respondent offering it a fair sum in consideration for the transfer of the domain name in dispute, the Respondent was willing to negotiate about the price and demanded a sum in excess of out-of-pocket costs, by asking in the e-mail submitted as Annex K to the Complaint:

"Regarding your offer for $ 500. First, I'd like to thank you for your offer. But, I think you and I know that it's worth a lot more than that. I must ask you that…how important is the domain to you?"

This kind of conduct clearly demonstrates bad faith of the Respondent, as was held in numerous panel decisions relating to similar cases (compare among others: WIPO Case No. D2000-0154 – <universityofnebraska.com>; DeC/AF Case No. 316 – DYNOJET; NAF Case No. 94951 – <missdenmark.com>).

Additionally, the domain name in dispute was registered and is being used in bad faith by the Respondent, because - in addition to the fame and reputation of the Complainant's marks in general - the Respondent actually admitted to knowing the Complainant's mark. In its response to the Complainant's offer to settle the matter the Respondent wrote:

"T-Online is a mobile company here in the US and I even use their services, T-Mobile."

Panels have held in a number of cases that bad faith is present, if the Respondent registers a domain name that is identical or confusingly similar to the Complainant's mark where the Respondent knows of the Complainant's mark (see NAF Case No. 92054 – FIBERSHIELD; NAF Case No. 94266 – <beautyco.com>; NAF Case No. 93557 – <vybar.com>; WIPO Case No. D2000-0283 – <fortehotels.com>).

Due to the aforementioned reasons, the disputed domain name was registered and is being used in bad faith.

B. Respondent

The Respondent has contested the allegations of the Complainant and stated the following:

"REGARDING ‘The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights’

T-online tv is a trademark for only in Germany. T-online tv is not trademarked neither internationally nor in European Community.

Just because the Complainant uses other domain names that doesn’t mean that it has the right to <t-OnlineTV.com>. There is a domain like <tonline.no> not owned by the Complainant and still operates.

REGARDING ‘Domain name is identical or confusingly similar to trademarks in which Complainant has rights’

As mentioned above, T-Online tv is only trademarked in Germany. Also, TV is a generic term, meaning it’s a universal term. Especially, "Online TV" is combination of another generic term, ONLINE. Therefore Online TV is another generic term that is for online televisions. Therefore, associating Online TV with a German company is ludicrous.

REGARDING ‘Respondent has no rights or legitimate interests in respect of the domain name’

The domain name has been parked using Trafficz paid parking system. The site provides valuable information such as Televisions, Live TV, Cable TV, etc. In providing such informative services to public, <t-onlinetv.com> seeks traffic profit partnered with <trafficz.com>. The site provides information about Online TV. The site has nothing to do with the German company.

On the page, there was "This domain is for sale!" without Registrant’s knowledge. This is because it was provided by "trafficz.com" as a default option. The Registrant has noticed it, and it had been taken out by making it not a default parking option for the name.

As to the Complainant’s offer of $500 US dollars, the answer was NO. In fact, the reply to the Complainant’s offer was a question. What it really means is, ‘No, the domain name is not for sale, but if you really need it, let me know how much it be worth to you. Surely, you and I know it’s worth more than $500’. Furthermore, the Complainant suggested the price first. The Complainant was never approached with possible sale of the domain name. In fact the Complainant offered to buy the domain name first.

Any other complaints that the Complainant has been made may not have been responded, for its irrelevancy.

Respondent certifies that the information contained in this Response is to the best of Respondent's knowledge complete and accurate, that this Response is not being presented for any improper purpose, such as to harass, and that the assertions in this Response are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument."

 

6. Discussion and Findings

According to paragraph 15(a) of the Rules the Panel shall decide a Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

2) that the Respondent has no rights or legitimate interests in respect of the domain name; and

3) that the domain name has been registered and is being used in bad faith.

The Complainant has shown that he is the proprietor of the registered trademark T-ONLINE TV and several registrations for the trademark T-ONLINE.

It is the Panelist’s opinion that the domain name <t-onlinetv.com> is identical to the trademark T-ONLINE TV in which the Complainant has rights, except for the addition of ".com". The Panelist also finds that the contested domain name is confusingly similar to the T-ONLINE trademarks of the Complainant since, in accordance with the allegations of the Complainant, the mere addition of the generic term "tv" does not preclude a finding of confusing similarity (see e.g. WIPO Case No. D2002-0367 – <experianautomotive.com>). Although the Panelist agrees with the Respondent that the terms "tv" and "online" are generic per se the addition of the letter "t" makes the words distinctive. This opinion is confirmed by the fact that the trademarks T-ONLINE TV and T-ONLINE have been registered.

Accordingly, the Panelist finds that the domain name at issue is identical or confusingly similar to the trademarks in which the Complainant has rights.

Furthermore, it is the Panelist’s opinion that the Respondent in his Response has failed to prove that he has any prior rights or legitimate interests in the domain name at issue. Nor has the Complainant authorised the Respondent’s activities or exers any control over Respondent’s activities.

The prerequisites in the Policy, paragraph 4(a)(i) and (ii) are therefore fulfilled.

Paragraph 4(a)(iii) of the Policy further provides registration and use of the domain name in bad faith. The circumstances mentioned in paragraph 4(b)(i)-(iv) of the Policy, if found by the Panel to be present, are examples of facts, which constitute evidence of the registration and use of a domain name in bad faith.

As shown by the Complainant the Respondent has admitted to being aware of the Complainant’s mark T-ONLINE. Furthermore, the Complainant has shown that the contested domain name has been used for domain parking with the purpose of the domain name being put up for sale, as is evident from the fact that it says "This domain is for sale!" on the website of the domain name. According to the Respondent, the Respondent did not have any knowledge about this offer on the website. However, upon being contacted by the Complainant with an offer to transfer the contested domain name to the Complainant for a sum of $ 500 the Respondent replied that "…I think you and I know that it's worth a lot more than that. I must ask you that…how important is the domain to you?" The Respondent himself has confirmed that this statement was to be interpreted as "Surely, you and I know it’s worth more than $ 500". This fact shows that the Respondent was willing to sell the contested domain name to the Complainant for a consideration in excess of out-of-pocket costs. It should be noted that the mere fact that the Respondent, when approached by the Complainant, showed a willingness to sell the domain name does not in itself constitute bad faith. However, the fact that the Respondent implied that he was only prepared to sell the domain name for a higher sum than $ 500 indicates bad faith on behalf of the Respondent. Furthermore, the Respondent was aware of the Complainant’s prior rights in the T-ONLINE mark. Therefore, it is the Panelist’s opinion that this conduct constitutes registration and use of the contested domain name in bad faith in accordance with paragraph 4(b)(i) of the Policy.

In view of these circumstances and the fact that the Respondent has not proven that he has any prior rights or legitimate interests in the contested domain name it is the Panelist’s opinion that the Respondent has registered and used the contested domain name in bad faith. Consequently, all the prerequisites for cancellation or transfer of the domain name according to paragraph 4(i) of the Policy are fulfilled.

The Complainant has requested transfer of the domain name.

 

7. Decision

In view of the above circumstances and facts, the Panelist decides that the domain name registered by the Respondent is identical or confusingly similar to the trademark and service mark in which the Complainant has rights, and that the Respondent has no rights or legitimate interests in respect of the domain name, and that the Respondent’s domain name has been registered and is being used in bad faith. Accordingly, pursuant to paragraph 4(i) of the Policy, the Panelist requires that the registration of the domain name <t-onlinetv.com> be transferred to the Complainant.

 


 

Jonas Gulliksson
Sole Panelist

Dated: November 17, 2003

 

Источник информации: https://internet-law.ru/intlaw/udrp/2003/d2003-0744.html

 

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