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Deutsche Telekom AG v. Tyson Rukash / Jonson
Case No. D2005-1023
1. The Parties
Complainant is Deutsche Telekom AG, of Germany, represented by Lovells, Germany.
The Respondent is Tyson Rukash / Jonson, of Australia.
2. The Domain Names and Registrar
The disputed domain names <t-mobele.com>, <t-mobila.com> and <t-mobili.com>are
all registered with Go Daddy Software (hereinafter collectively Domain Names).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 29, 2005. On September 29, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On the same date, Go Daddy Software transmitted by email to the Center its verification response confirming that the Domain Names are registered with Go Daddy in the name of Tyson Jonson (<t-mobila.com> and <t-mobele.com>) and in the name of Tyson Rukash (<t-mobili.com>), 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 Respondent of the Complaint, and the proceedings commenced on October 7, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 27, 2005. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 28, 2005.
The Center appointed Ms. Anna Carabelli as the Sole
Panelist in this matter on November 4, 2005. 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
Complainant is one of the largest telecommunications companies in the world. Complainant’s websites under “www.deutsche-telekom.com”, “www.t-mobile.net” and “www.t-mobile.com” (Attachments C and D to the Complaint) confirm it is present in more than 50 countries worldwide, offering integrated solutions in the market of telecommunications, and that T-Mobile International is a wholly-owned subsidiary of Complainant and one of the largest international mobile communications carriers.
Complainant has provided evidence (Attachments E, F and G to the Complaint) of registration of the following national, EU and international trademarks reflecting the designation “T-mobile”:
- Australian Reg. No. 851000 filed on September 20, 2000, in connection with international classes of goods and services CL. 9, 14, 16, 18, 25, 28, 36, 37, 38, 41, and 42;
- Australian Reg. No. 851003 filed on September 20, 2000, in connection with international classes of goods and services CL. 9, 14, 16, 18, 25, 28, 36, 37, 38, 41, and 42;
- EU Reg. No. 00485441 filed on February 26, 1997 in connection with international classes of goods and services CL. 9, 14, 16, 18, 25, 28, 36, 37, 38, 41, and 42;
- International Reg. No. 00680034 filed on February 26, 1997 in connection with international classes of goods and services CL. 9, 14, 16, 18, 25, 28, 36, 37, 38, 41, and 42;
- International Reg. No. 00680035 filed on February 26, 1997 in connection with international classes of goods and services CL. 9, 14, 16, 18, 25, 28, 36, 37, 38, 41, and 42;
and the designations “T-Mobil” (International Reg. N° 00660483 filed on June 8, 1996 in connection with international classes of goods and services CL. 9, 14, 16, 18, 25, 28, 36, 37, 38, 41, and 42) and “.T…Mobil” (Reg. N° 00660481 filed on June 8, 1996 in connection with international classes of goods and services CL. 9, 14, 16, 18, 25, 28, 36, 37, 38, 41, and 42).
The Complainant has further provided evidence (Attachment H to the Complaint) of registration of the domain names <t-mobile.com>, <tmobile.com>, <t-mobile.net>, <tmobile.net>, <t-mobil.net>, <t-mobile.com.au/>, <t-mobile.net.aut>, <tmobile.com.au>, <tmobile.net.au>.
The Domain Names were registered on November 4, 2004 (Attachment A to the Complaint) and have been used in connection with a site containing sponsored links (Attachment I to the Complaint).
On July 15, 2005, Complainant sent to Respondent a cease-and-desist letter and a remainder on August 5, 2005, requesting that the Domain Names <t-mobili.com> and <t-mobila.com> be transferred to Complainant and that Respondent refrain from registering any further domain names containing the word “T-Mobile” or any confusingly similar term (Attachment J to the Complaint). Respondent replied on August 10, 2005, by email using the email address [email address]explaining that a company had allegedly offered 1,500 United States dollars for the Domain Names and that he would transfer them to Complainant in case of a matching offer (Attachment K to the Complaint).
Following Complainant’s reply refusing to pay the sum of 1,500 United States dollars and threatening to take legal action (Attachment L to the Complaint), in his e-mail of August 16, 2005, Respondent underlined that it “was in the best interest” of Complainant to agree to his offer, since UDRP proceedings would cost at least 5,000 United States dollars and would take longer with an unknown outcome (Attachment M to the Complaint).
On August 25, 2005, (Attachment N to the Complaint), Complainant informed the Registrar GoDaddy that, according to a recent check of the WHOis database, the Domain Name <t-mobila.com> appeared to have been transferred to a “new” registrant: “Tyson Jonson”, whose address however was partly identical with Respondent’s address (same email address) and partly missing. Therefore Complainant asked the Registrar to release the Domain Name <t-mobila.com> based on clauses 7 and 3 of the Registration Agreement.
On August 22, 2005, the Registrar informed Complainant that “The Domain Name <t-mobila.com>” is now under investigation for invalid whois. The owner of the domain will have a brief time period to update the information or the domain may be cancelled”, then, on September 14, 2005, notified Complainant that the contact information had been completed (Attachment O).
On September 16, 2005, Complainant sent a cease-and-desist letter to the new registrant (Tyson Jonson) at the address indicated by the latter which is the same as the Respondent’s (Attachment P). On September 20, Tyson Jonson replied offering the Domain Name <t-mobila.com> for sale on the same conditions as those offered by Respondent (for the sum of 1,500 United States dollars, transaction to be organised via escrow.com) underlying how costly UDRP proceedings would be (Attachment Q).
On the same date, the Registrar informed Complainant that “the owner of “t-mobila.com” had actually not made proper corrections to the domain name contact information and that the domain name would go into a Redemption Grace Period and may then be released” (Attachment R).
On September 26, 2005, Complainant sent an email to Respondent asking him,
whom Complainant would have to deal with, Tyson Rukash or Tyson “Jonson”;
Respondent simply answered that the [email address] was the right email address
5. Parties’ Contentions
A. Complainant contends that:
- Tyson Rukash, who was originally the owner of all the Domain Names, and Tyson Jonson, who is now the formal registrant of <t-mobila.com>, are the same person. Apart from the surname, in fact, all Go Daddy Whois data are identical and it was clearly the same person who answered Complainant’s cease-and-desist letters;
- the Domain Names “are confusingly similar to the Complainant’s trademarks “T-Mobile” since: (i) the only difference between them and each of the Domain Names is just one letter, which fact amounts to “typosquatting”; and (ii) all standards identified by the panels for assessing the element of confusing similarity (i.e.: visual and pronunciation impression, effect of misspelling on the appearance of the words, level of recognition of the trademark, intentional misspelling) are met here;
- Respondent has no rights or legitimate interests in the Domain Names since: (i) it is not, nor has ever been, a representative or licensee of Complainant, nor is it otherwise authorized to use Complainant’s marks; (ii) Respondent does not use the Domain Names in connection with a bona fide offering of goods or services, nor is it making a legitimate non-commercial or fair use of the Domain Names; (iii) on the contrary, the Domain Names resolve to a website providing sponsored links;
- the Domain Names were registered and are being used in bad faith since: (i) when he registered the Domain Names, Respondent certainly had knowledge of Complainant’s trademarks and business name given their worldwide fame; (ii) the Domain Names resolved to a website containing a list of sponsored links; (iii) Respondent has therefore intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location; and (iv) Respondent has offered the Domain Names for sale for a sum substantially exceeding its out-of-pocket costs, which fact indicates that he had registered the Domain Names primarily with the purpose of selling them to Complainant as the owner of the trademark, or to a competitor.
Respondent has not replied to Complainant’s
6. Discussion and Findings
Preliminarily, the Panel feels it appropriate to address the issue of Respondent’s identity. In the Panel’s view, all Domain Names are owned by the same person, although <t-mobila.com> is in the name of Tyson Jonson, and <t-mobele.com> and <t-mobili.com> are in the name of Tyson Rukash.
From the documents submitted by Complainant it appears that Tyson Jonson and Tyson Rukash are the same person. Apart from the fact that they share the same postal address and e-mail address (see Go Daddy Whois search results, Attachment A), the Panel deems that the fact that Complainant, in response to its two different cease-and-desist letters to Tyson Rukash and Tyson Jonson, received two replies from the same e-mail address, offering to settle the matter on identical conditions, for the same consideration and basically using the same expressions, is conclusive evidence that Tyson Jonson and Tyson Rukash are the same person.
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under Paragraph 4(a) of the Policy, a complainant must prove each of the following:
(i) the domain name at issue is identical or confusingly similar to the complainant’s trademark or service mark; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purposes of paragraph 4(a)(iii), shall be evidence of the registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by a respondent, shall be evidence of that respondent’s right to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii) above.
A. Identical or Confusingly Similar
Complainant has proven to have acquired trademarks rights in T-MOBILE and T-MOBIL by virtue of a number of national, EU, and international registrations and their extensive use worldwide and that the trademark T- MOBILE is distinctive of the Complainant’s business.
Each of the three Domain Names are confusingly similar to Complainant’s trademarks and corporate name.
The only difference between the Domain Names (<t-mobila.com>,
<t-mobili.com>, and <-t-mobele.com>) and Complainant’s trademarks
(“T-Mobile” and “T-Mobil”), is the misspelling, consisting
in the change of the second and/or of the third vowels in the word “mobile”
and it is well established that such misspellings are actionable under the Policy:
domain names which differ from a trademark by only minor variations have a greater
tendency to be confusingly similar to the trademark where the trademark is highly
distinctive and there is a close similarity both aurally and visually between
the domain names and the complainant’s mark (Reuters Limited v. Global
Net 2000 Inc., WIPO Case No. D2000-0441;
Encyclopedia Britannica, Inc. v. John Zuccarini, WIPO
Case No. D2000-0330; Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party,
WIPO Case No. D2000-1415; Hewlett-Packard
Co. v. Cupcake City, NAF File No. FA000200093562).
The Panel finds therefore that this element has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out in particular, but without limitation, three circumstances which, if proved by a respondent, shall be evidence of that respondent’s rights to or legitimate interests in a domain name for the purpose of paragraph 4(a)(ii), namely:
(i) before any notice of the dispute to the respondent, the respondent’s use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial 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.
Complainant has put forward prima facie evidence that none of the three
circumstances establishing legitimate interests or rights mentioned above applies.
As stressed by many UDRP decisions, in such a case the burden of proof shifts
to the respondent to rebut the evidence (See, among others, Carolina Herrera,
Ltd. v. Alberto Rincon Garcia, WIPO Case
No. D2002-0806; International Hospitality Management – IHM S.p.A.
v. Enrico Callegari Ecostudio, WIPO Case
No. D2002-0683; Belupo d.d.v. WACHEM d.o.o., WIPO
Case No. D2004-0110).
Respondent has not filed any submission or evidence whatsoever in order to rebut Complainant’s prima facie evidence.
There is no evidence before the Panel that Respondent has any rights or legitimate interests in the Domain Names for the purpose of paragraph 4(a)(ii) of the Policy under the above criteria or otherwise.
The Panel therefore finds that Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Complainant has shown that its trademark T-MOBILE has been widely used to identify Internet and mobile communications services offered by Complainant and has acquired worldwide reputation.
As established above, the Domain Names are confusingly similar to Complainant’s trademarks and Respondent has no rights or legitimate interests in the Domain Names.
The Panel may therefore reasonably consider that Respondent was aware of Complainant’s
trademarks at the time when he registered the Domain Names (See Nokia, Inc.
v. B. B. de Boer, WIPO Case No. D2000-1397).
Complainant is relying on paragraphs 4(b)(i) and (iv) of the Policy, which provide that sufficient evidence of bad faith may consist of:
“(i) Circumstances indicating that you have registered or that you have required the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name”;
“(iv) By using the domain name, you have intentionally attempted to attract for commercial gain, Internet users to your website or other on-line locations, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Panel finds that Complainant has provided sufficient evidence in this regard.
Respondent’s emails make apparent that Respondent intended to sell the Domain Names in excess of his documented out-of-pocket expenses directly related to the Domain Names. In addition, the price asked for by Respondent is clearly oriented at the cost of an UDRP proceeding and Respondent obviously speculated that the Complainant would rather pay this price than initiate an ICANN proceeding. An additional circumstance supporting this conclusion is the fact that Respondent transferred the domain <t-mobila.com> to another registrant right after the Complainant’s first cease-and-desist letter, presumably for the purpose of making Complainant pay for two ICANN proceedings instead of only one.
Complainant has also shown that the disputed Domain Names are used in connection
with a website providing various sponsored links related to different services
including telecommunications and Internet services. As stressed in Deutsche
Telekon AG v. WWW Enterprise Inc., WIPO
Case No. D2004-1078, it is now a well-known practice to display on a web
page or search engine various links to other commercial websites, every link
activated by an Internet user enables the host of the search engine to collect
financial remuneration proportional to the number of connections. Previous panels
have established that this practice constitutes bad faith use (Lowen Corporation
d/b/a/ Lowen Sign Company v. Henry Chan, WIPO
Case No. D2004-0430; Associazione Radio Maria v. Mr. Hong Hee Dong,
WIPO Case No. D2005-0062; Micro Electronics
Inc. v. J. Lee, WIPO Case No. D2005-0170).
Based on the above, the Panel finds that the Domain Names have been registered
and are being used in bad faith.
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 Names <t-mobila.com>, <t-mobili.com>, and <t-mobele.com>, be transferred to Complainant.
Dated: November 18, 2005