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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Deutsche Telekom AG v. Mighty LLC/Domain Admin

Case No. D2005-0027

1. The Parties

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

The Respondent is Mighty LLC/Domain Admin, Charlestown, Nevis of Saint Kitts and Nevis, represented by ESQwire.com Law Firm, United States of America.

2. The Domain Name and Registrar

The disputed domain name <tmobil.com> is registered with Parava Networks, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2005, by email and on January 20, 2005, on hard copy. On January 7, 2005, the Center transmitted by email to Parava Networks, Inc. a request for registrar verification in connection with the domain name at issue. On January 7, 2005, Parava Networks, Inc. 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 January 24, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was February 13, 2005. On February 8, 2005, Respondent requested an 8 day extension of the deadline until February 21, 2005, and the Complainant agreed to this extension. The extension was granted by the Center on February 10, 2005. The Response was sent on February 21, 2005, at Respondent’s location and filed with the Center on February 22, 2005.

The Center appointed Thomas Webster, William Lobelson and Jonathan Turner as panelists in this matter on March 11, 2005. The Panel finds that it was properly constituted. Each member of 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 in this administrative proceeding is Deutsche Telekom AG, a well known telecommunications company. The Complainant carries out mobile telephone operations under the name ‘T-Mobile’, formerly ‘T-mobil’.

In February 1997, the Complainant registered a certain number of national, community and international trademarks reflecting the terms ‘T-Mobile’ and ‘T-Mobil’. The trademark ‘T-MOBILE’ on which the complaint is based is a registered trademark (International Registration IR 680034, US registration 2284387). The Complainant is also the owner of various ‘T-MOBIL’ trademarks, inter alia International Registration IR00660483. Furthermore, the Complainant registered and is using the domain names <t-mobile.net>, <tmobile.net>, <t-mobil.com>.

The disputed domain name <tmobil.com> was originally registered by Unitedeurope Consulting, Korea. The Complainant’s representatives sent a letter of complaint to this entity on July 14, 2004, and a further letter on August 24, 2004, offering it €500 to transfer the domain name. The first letter pointed out that the domain was in use and included a printout of the website showing advertising for weight loss patches. Unitedeurope Consulting informed the Complainant’s representatives on September 2, 2004, that it was in dispute with another party about the domain name and would revert when this was resolved. The Complainant’s representatives requested details of the dispute on September 24, 2004. Unitedeurope Consulting responded on October 1, 2004, that it hoped to revert in August 2005. By October 6, 2004, the domain name had been transferred to DNS Admin, USA and was used to display sponsored links. By November 8, 2004, it had been transferred again, to Motherboards.com, USA. The Complainant’s representatives sent a letter of complaint to Motherboards.com on November 9, 2004. The domain name was then transferred to by the Respondent on November 24, 2004.

The Respondent operates the web-site “www.tmobil.com” which provides links to various distributors of telecommunications products. A copyright notice at the foot of the page states ‘© Copyright 2005 tmobil.com. All Rights Reserved.’

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name <tmobil.com> is confusingly similar to the Complainant’s trademarks ‘T-MOBILE’ and ‘T-MOBIL’. According to the Complainant, on the one hand <tmobil.com> is identical to ‘T-MOBIL’, and on the other hand it is confusingly similar to ‘T-MOBILE’.

Furthermore, the Complainant puts forward that the Respondent has no legitimate interest in the use of the domain name. The Complainant explains that “The Respondent is not, and has never been, representative or licensee of the Complainant, nor is the Respondent otherwise authorized to use the Complainant’s mark”.

According to the Complainant, the Respondent “does not use the domain name <tmobil.com> for a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use of it. Having inserted the respective domain name ‘www.tmobil.com’ as URL address, a website is shown which contains sponsored links for various products of Complainant’s daughter, company T-Mobile”. Complainant underlines that “sponsored links are links that make the owner of a website earn money once internet users use these links”.

Finally, the Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith. Complainant alleges that “the Respondent has had knowledge of the Complainant’s trademarks and business names when he registered the domain name, this being “evident given the fame of the Complainant’s trademarks in Germany, the US and elsewhere”. Moreover, “the Respondent has registered the domain name with the intent to benefit from the reputation of the famous trademarks and the company name contained in its domain name”.

B. Respondent

The Respondent admits that the disputed domain name <tmobil.com> is confusingly similar to the Complainant’s trademark.

However, the Respondent argues that it has “a legitimate interest in the disputed domain because it is engaged in a bona fide offering of goods and services by virtue of the sponsored links that appear in connection with the site. The sponsored links promote the sale of Complainant’s goods and services that are offered through Complainant’s authorized distributors.”

The Respondent further contends that “it is well-established under the Policy that the sale of products associated with a trademark contained in a domain name constitutes the bona fide offering of goods and services, where competitive products are not being promoted and where the Respondent has done nothing to confuse users into believing the site is endorsed by or associated with the Complainant.”

Respondent adds that it “uses the domain name tmobil.com to present sponsored search results for the term “tmobil” -- search results that are to identical to those yielded by a Yahoo.com search for this term. Respondent’s web site has an express heading that accurately reflects that the site contains “Sponsored Results.” According to the Respondent, “this promotion of Complainant’s products and services in a non-confusing manner constitutes the bona fide offering of goods and services under the Policy.”

Respondent also contends that there is no bad faith in registration. Respondent alleges that it “has not offered to sell the Disputed Domain to Complainant or to any party” nor has it “sought to disrupt Complainant’s business or prevent it from reflecting its trademark in a domain name”. Respondent puts forward that is “has not sought to confuse users” and “is simply promoting the sale of Complainant’s goods and services by presenting sponsored search results from Complainant’s authorized distributors”.

6. Discussion and Findings

Under the Policy, paragraph 4(a) the Complainants must prove that each of the following three elements are present:

(i) the Domain Name is identical with or confusingly similar to a trademark in which the Complainant has rights; and

(ii) the Respondent has no right or legitimate interest in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel is satisfied that <tmobil.com> is identical or confusingly similar to the Complainant’s trademarks. Since the Respondent does not dispute this point, further discussion is unnecessary.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent can demonstrate his rights or interests in the disputed domain name by demonstrating any of the following:

(i) before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if they have acquired no trademark or service mark rights; or

(iii) Respondent is 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.

The Respondent is not known by the domain name and it is using the domain name for commercial gain by providing sponsored links. Therefore, sub-paragraphs (ii) and (iii) of paragraph 4(c) of the Policy do not apply. However, Respondent contends that it is using the domain name “in connection with a bona offering of goods or services” within the meaning of sub-paragraph (i).

According to the Respondent, “the sale of products associated with a trademark contained in a domain name constitutes the bona fide offering of goods and services, where competitive products are not being promoted and where the Respondent has done nothing to confuse users into believing the site is endorsed by or associated with the Complainant.” The Respondent also cites a number of domain name cases which the Respondent maintains support the argument that its use of the “www.tmobil.com” site is legitimate.

The Panel disagrees with the Respondent’s application of the principles in the present case. The test for a bona fide offering of the trademark owner’s own goods and services as set out in Oki Data Americas, Inc v. ASD, Inc. WIPO Case No. D2001-0903, is as follows:

(i) “Respondent must actually be offering the goods or services at issue…..

(ii) Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods. …

(iii) The site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents…..

(iv) The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name…..”

This test has been applied by several Panels and this Panel finds it an appropriate standard in this case.

In the present case, the Respondent does not itself sell T-Mobile products but merely provides links to websites of distributors of T-Mobile products. The Panel is doubtful whether this complies with the first Oki Data requirement. In any case, some of the websites which the Respondent’s site promote also sell products for the Complainant’s competitors, such as Nextel, AT&T, Alltell, Cingular, Verizon and Sprint. Therefore, the Respondent clearly falls afoul of requirement [ii], as the consumer who has typed in the domain name <tmobil.com> will be led to distributors of competing products.

In addition, the Respondent does not make it clear in its site that it is not affiliated with the Complainant. On the contrary, the Respondent’s site includes a copyright notice which misleadingly implies that it is a site of the T-mobil company. Therefore, the initial confusion caused by basically using the Complainant’s trade name as a domain name is not dissipated and indeed is reinforced by the content of the Respondent’s website. This is contrary to requirement [iii].

The Panel has considered the domain name cases cited by the Respondent as well as other cases dealing with similar issues. However, where the Respondent in those cases was successful, there appear to have been other distinguishing factors.

For example, in Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187, the Panel relied on the fact that basically only the Complainant’s goods were being promoted by the Respondent’s website. In the present case, the Respondent is providing links to distributors selling competing products as well as the Complainant’s products.

Grobet File Company Of America, Inc. v. The Exchange Jewelry Supply, NAF Case No. 94960, concerned the registration of a domain name by an authorized distributor. Therefore, there was a legitimate offering of goods and services by the Respondent using the domain name prior to the dispute. In the present case, there has been no such relationship between the parties.

Koninkliijke Philips Electronics N.V. v. Cun Siang Wang, WIPO Case No. D2000-1778, dealt with the domain name <philips-indonesia.com>. In that case the Respondent made it clear that its website was not affiliated with the Complainant and the Panel noted that: “The Respondent’s website appears to be advertising products made and placed on the market by the Complainant’s group. There is no evidence that it is bogus in the sense that the Respondent is not selling products at all, or that the Respondent is using it to sell products other than those placed on the market by the Claimant’s group.” In the present case there is no disclaimer of a relationship between the parties and the website merely provides links to websites offering various products, not limited to those of the Complainant’s group.

Therefore, while the Respondent’s cases are helpful, they are all distinguishable as regards the basic requirements set out in the Oki Data Americas, Inc v. ASD, Inc. WIPO Case No. D2001-0903, referred to above.

There does not appear to be any other basis on which the Respondent can claim rights or legitimate interests in respect of the domain name or a corresponding name. Therefore, the Panel is satisfied that the Respondent does not have any rights or legitimate interest in respect of the domain name in accordance with to the Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The reaction of the original registrant of the domain name when challenged, described above, indicates that it was originally registered in bad faith. However, the Complainant has to show that it is also being used in bad faith by the present registrant in order to succeed in this Complaint.

According to paragraph 4(b) of the Policy, certain circumstances shall be evidence of the registration and use of a domain name in bad faith. These include in sub-paragraph (iv) the fact that the Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website or location or of a product or service on his website or location.

The Respondent is using the Complainant’s mark ‘T-MOBIL’ to attract Internet users to its website without making it clear that it is not a website of the Complainant or affiliated with or sponsored or endorsed by it. Furthermore, the copyright notice on the website implies that the content of the website is provided by the Complainant. The Panel considers that the Respondent has therefore created a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of his website.

Moreover, the pay-per-click service used by the Respondent enables the Respondent to gain advertising revenues based on the amount of Internet traffic directed through its site. The Respondent is thus using the domain name to attract users with a view to commercial gain.

The Panel therefore considers that there is evidence of use in bad faith in accordance with paragraph 4(b)(iv) of the Policy.

In addition, the Respondent is using the domain name incorporating the Complainant’s mark to divert Internet users seeking information about the Complainant to websites which offer competing products as well as those of the Complainant.

The Panel is satisfied that the domain name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of 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 domain name <tmobil.com> be transferred to the Complainant.