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WIPO Arbitration and
Deutsche Telekom AG v. foxQ
Case No. D2004-0102
1. The Parties
The Complainant is Deutsche Telekom AG, of Bonn, Germany, represented by Lovells, Germany.
The Respondent is foxQ, C/O Kim, Jun Weon of SiHeung, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <d-online.com> is registered with All West Communications Inc. dba AWRegistry.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 9, 2004. On February 9, 2004, the Center transmitted by email to All West Communications Inc. dba AWRegistry a request for registrar verification in connection with the domain name at issue. On February 10, 2004, All West Communications Inc. dba AWRegistry transmitted by email 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 (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 February 18, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was March 9, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 11, 2004.
The Center appointed Peter G. Nitter as the sole panelist in this matter on March 24, 2004. 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 Europe’s largest telecommunications company, and has established presence in the major economic centers of the world, serving customers in more than 65 countries around the globe through regional units.
The Complainant and its daughter company T-Online provides services such as Internet access, multimedia services, web-hosting and e-mail-services, online-banking and international roaming access.
The Complainant is the holder of trademark registrations for the marks T-ONLINE and T ONLINE under the Madrid System for International Registration of Marks, with priority dating back to 1995. The Complainant also holds registrations for the above-mentioned marks in the US and in the European Community. Said marks are registered in a wide range of classes according to the Nice classification.
The domain name registrations <t-online.com>, <.net>, <.org>, <.info>, <.biz> and <.de>, as well as tonline.com <.net>, <.org>, <.info>, <.biz> and <.de> are all held by the Complainant.
5. Parties’ Contentions
The domain name <d-online.com> is confusingly similar to the Complainant’s marks T-ONLINE and its Internet services at "t-online.de" ".com" ".net" and ".org".
The domain name differs only in the letter "d", which usually stands for "Deutschland" (Germany), instead of "t". In light of the Complainant’s registered marks, the registration of the disputed domain name is a misrepresentation that the domain name is somehow connected with, associated or authorized by the Complainant when it is not.
It is highly likely that Internet users getting aware of the domain <d-online.com> will think that this domain might be an Internet service of the Complainant. The present case is a typical case of "typo-piracy".
The Respondent does not show any legitimate interest in the use of the Internet domain.
The Respondent does not use the domain name at issue for a bona fide offering
of goods or services, and is not making a legitimate non-commercial or fair
use of it. The Respondent does not offer and never has offered any goods or
services nor even information on the domain. Such inactivity has been seen as
an indication of lack of legitimate interest in previous panel decisions under
the UDRP, see Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution
Purchasing & Logistics Corp. WIPO
Case No. D2000-0464.
The disputed domain name has been registered in bad faith.
There has been no use of the domain name by the Respondent. The lack of use
of the domain name is, according to various administrative panel decisions of
the WIPO Arbitration and Mediation Center, an indication of the Respondent’s
bad faith. Reference is made to Atlantic Recording Corporation v. Paelle
International WIPO Cases No. D2001-0065
and Toyota Motor Sales USA v. Rafi Hamid dba ABC Automobile Buyer, WIPO
Case No. D2001-0032, and National Arbitration Forum Case No. FA-94798.
The Complainant’s trademarks are furthermore to be considered well-known in
many markets, and according to previous administrative panel decisions of the
Center this is an indication for bad faith at the time of registration of the
domain. Reference is made to panel decisions; Red Bull GmbH v. Harold Gutch,
WIPO Case No. D2000-0766, eBay
Inc. v. Sunho Hong, WIPO Case No. D2000-1633
and Australian Stock Exchange Limited and ASX Operations Pty Limited v Community
Internet (Australia) Pty Ltd., WIPO Case
The domain name at issue was previously registered for a German registrant, who after having been admonished by the Complainant deleted the registration. Immediately after the domain name was freely available for Registration, the Respondent registered the domain name on his behalf.
Even before the reception of the cease and desist letter, the Respondent tried to offer the disputed domain name through the corresponding web-page. Only a short time after receipt of the Complainant’s cease and desist letter, the Respondent offered the domain name to the Complainant for an amount of USD 4.750, which clearly exceeds the costs for registration and maintaining the domain name. This behavior in addition with the lack of use of the domain name and the engagement in a pattern of conduct indicates the profit-seeking motives of the Respondent.
There is furthermore no evidence that the disputed domain name bears a relationship
to any business or other activity of the Respondent, which indicates that the
Respondent has registered the domain name at issue primarily for the purpose
of disrupting the business of the Complainant and therefore without good faith.
Reference is made to panel decision Sony Kabushiki Kaisha (also trading as
Sony Corporation) v. Inja, Kil, WIPO Case
The Respondent did not reply to the Complainant’s contentions.
The Panel notes that the domain name appears to be the subject to a court case in the Republic of Korea, see telefax from the Respondent of April 1, 2004. However, the Panel will not suspend or terminate this proceeding as it has discretion to do so pursant to paragraph 18 of the Rules.
6. Discussion and Findings
A. Identical or Confusingly Similar
Paragraph 4(a) of the Policy lists three requirements which a complainant must satisfy in order to succeed. The first of these requirements is that the Respondent's domain name in issue is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights.
The domain name at issue is not identical to Complainant’s trademarks T-ONLINE or
T ONLINE, and the question is therefore whether the domain name at issue is confusingly similar to said trademarks.
A dominating part of Complainant’s trademarks T-ONLINE and T ONLINE is the word "online". For products or services with a connection to web pages, or the Internet or communication in general, this word must be regarded as descriptive.
The term"online" is commonly used as a description for anything that is connected to the Internet, and is also very common as a part of trademarks for products and services that are available through the Internet.
The remaining part of the Complainant’s trademarks is the letter "T", which the Complainant also to a great extent uses as a figurative trademark in itself, set out in a characteristic pink colour. It is thus the "T" that constitutes the most distinctive and recognizable part of the trademarks T-ONLINE and T ONLINE, and the Panel finds it likely that the users desiring to access the home-page of the Complainant will associate Complainant with the T that it uses so prominently, and that the likelihood of confusion with the domain name at issue therefore is small.
As the word "online" is descriptive, and the Complainant’s trademarks only consists of this word with the addition of a "T", the overall distinctiveness of the trademarks T-ONLINE and T ONLINE must be regarded as small. Hence, Complainant’s trademarks does not have a wide area of protection against third parties’ use of trademarks or domain names that have similarities with Complainant’s marks.
Domain names consisting of a letter or a word, with the addition of the term "online", the two being connected with a hyphen, are very common. The Panel has found that a large range of companies have registered such domain names for their businesses, inter alia <a-online.com>, <b-online.com>, <c-online.com>, <z-online.com> and many more. The majority seem taken.
The Panel realizes that the letter "d", is relatively similar phonetically to the letter "t" in the English and German languages. The sound of "d" is more similar to the sound of "t" than the sound of most of the other letters that form part of the domain names mentioned above. Visually there is however no particular similarity between the two letters, and the Panel thus finds that there is no extraordinary risk of confusing these two letters when used in domain names.
The Policy was introduced to deal with those who include in a domain name a trademark with the result that some potential uses of the domain name could realistically lead to confusion with that mark. In order to meet the first element of the Policy there should be clear evidence that the domain name in contention will be identified with Complainant’s trademark or will be confused by the public through similarity to that mark.
In the opinion of the Panel, the Complainant has failed to show any such evidence that the domain name in contention will be identified with Complainant’s trademark. Taking into account the case file, there is very little reason to believe that <d-online.com> should be typosquatting of the mark T-ONLINE. The panel thus concludes that the first requirement of the Policy Paragraph 4(a), that the Respondent's domain name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights, has not been met, and the Panel need not consider this matter further.
For all the foregoing reasons, the Complaint is denied.
Peter G. Nitter
Date: March 7, 2004