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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Deutsche Telekom AG v. Jьrgen Mьller

Case No. D2005-1340

 

1. The Parties

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

The Respondent is Jьrgen Mьller, New York, New York, United States of America.

 

2. The Domain Names and Registrar

The disputed domain names <musicload.cc> and <wwwmusicload.com> are registered with TierraNet d/b/a DomainDiscover.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2005. On December 28, 2005, the Center transmitted by email to TierraNet d/b/a DomainDiscover a request for registrar verification in connection with the domain names at issue. On January 3, 2006, TierraNet d/b/a DomainDiscover 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 January 11, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was January 31, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 15, 2006.

The Center appointed Luca Barbero as the sole panelist in this matter on February 28, 2006. 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.

On March 22, 2006, a procedural order was issued indicating that pursuant to paragraph 10(c) of the Policy, the Panel requested an extension of time to further evaluate the case and the documents submitted.

 

4. Factual Background

The Complainant is Europe’s largest telecommunications company and is the owner of the Community Trademark Registration no. 3795184 filed on April 26, 2004, in classes 9,16, 36, 37, 38, 41, 42 and no. 3552007 filed on November 11, 2003, in classes 9,16, 36, 37, 38, 41, 42 for MUSICLOAD.

The Respondent registered the domain names <musicload.cc> on July 12, 2004, and <wwwmusicload.com> on September 25, 2004.

 

5. Parties’ Contentions

A. Complainant

The Complainant points out that, as Europe’s largest telecommunications company, it has an established presence in the major economic centers of the world, serving customers in more than 65 countries around the globe through regional units with a focus on the most dynamic markets in Europe and the United States. The Complainant and its subsidiary T-Online International AG carry on the business of providing Internet sevices with nearly 14 million customers. In addition to access-providing-services, the Complainant offers a broad range of multimedia services, including free and paid content, web-hosting, email-services, online-banking and international roaming access.

The Complainant highlights that in September 2003, the Complainant and its subsidiary T-Online International AG established a music download portal on the Internet for lawful music downloads under the designation Musicload. This Musicload portal is conducted under the domain names <musicload.de> and <music-load.de>, which are registered by the Complainant.

The Complainant informs the Panel that the Musicload portal was launched in 2003, and presently has a market share in Germany of 19.5 percent with more than 1 million downloads per month. These figures make Musicload the market leader in Germany and thus, the largest German provider of downloadable music on the Internet.

The Complainant has registered a Community trademark reflecting the term MUSICLOAD with registration no. 3795184, enjoying protection since April 26, 2004, in classes 9, 16, 36, 37, 38, 41, 42. The Complainant indicates that in the last quarter of 2004, it spent more than 6 million Euro for advertisements, providing the Panel with a printout of the Complainant’s advertising efforts in 2004, as well as a copy of a market survey by the German research institute GfK attesting that the Musicload portal is recognized by nearly 61 % of the German customers of music download.

The Complainant underlines that the domain name <musicload.cc> is identical to the MUSICLOAD trademarks and the domain name <wwwmusicload.com> is a case of “typosquatting” since it differs only in the prefix “www” and therefore is confusingly similar to the trademarks.

With reference to rights or legitimate interests in respect of the disputed domain names, the Complainant states that the Respondent is not, and never has been, representative or licensee of the Complainant, nor is the Respondent otherwise authorized to use the Complainant’s marks.

According to the Complainant, the Respondent does not use the disputed domain names for a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use of it since the Respondent is currently using the domain name to redirect Internet users to the website “www.jukebox24.com” which offers music download services for the German market.

The Complainant informs the Panel that it has sent cease and desist letters dated June 28, 2005 and August 3, 2005 to the Respondent at its German address as provided on the web site “www.jukebox24.com” and to its New York address. The Respondent has refused to answer these letters, however, the Respondent has reacted insofar that he has switched off the redirection of the domain name <musicload.cc> to the webpage to “www.jukebox24.com”, providing the Panel with printouts of the current and the former website.

The Complainant reiterates that the Complainant’s music download service under “www.musicload.de” has become the market leader in legal music download services in Germany and therefore, the public has come to associate the distinctive name MUSICLOAD exclusively with the Complainant and its subsidiary T-Online International AG.

With reference to the circumstances evidencing bad faith, the Complainant indicates that the fact that the Respondent directs the disputed domain names to his competing German website under “www.jukebox24.com” clearly proves that the Respondent is very familiar with the German music download market and was aware of the MUSICLOAD brand when registering the disputed domain names.

In view of the Complainant, the trademark MUSICLOAD is to be considered as a well-known mark, at least in Germany, but probably also in all German-speaking countries. As the Respondent is also trying to offer its download services to the German market, he should be aware of the market leader in Germany in this sector, even if based in New York.

The Complainant emphasizes that the Respondent’s mere act of typosquatting in relation to famous marks presents ample evidence of bad faith. With reference to the registration and use in bad faith, the Complainant concludes that the redirection to the Respondent’s competing Internet download portal allows the Respondent to receive commercial gains and therefore the Respondent has registered and used the domain names with the intent to attract Internet users to his websites who are looking for the products and services of the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. Therefore, the Panel shall decide this proceeding on the basis of the Complainant’ submissions, drawing such inferences from the Respondent’s default as are considered appropriate in accordance with paragraph 14(b) of the Rules.

 

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A panel shall decide a Complaint on the basis of the statements and documents submitted 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:

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

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

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

A. Identical or Confusingly Similar

The Complainant has provided evidence of ownership of the trademark registrations consisting in the sign Musicload such as the Community Trademark Registrations, no. 3795184 filed on April 26, 2004, in classes 9, 16, 36, 37, 38, 41, 42 and no. 3552007 filed on November 11, 2003, in classes 9, 16, 36, 37, 38, 41, 42.

In comparing the domain name <musicload.cc> to Complainant’s marks, it should be taken into account the well-established principle that the suffixes, including the country code top level domains, must be excluded from consideration as being merely a functional component of the domain name.

As to the domain name <wwwmusicload.com>, the Panel finds that the prefix “www” is not to be considered a factor of differentiation as it has no distinguishing capacity when included in a domain name, being the acronym of “world wide web” as stated in Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441, transferring <wwwreuters.com>; and Ticketmaster Corporation v. Woofer Smith, WIPO Case No. D2003-0346; transferring <wwwticketmaster.com>.

In view of the above, the Panel finds that the Complainant has proven that the disputed domain names <musicload.cc> and <wwwmusicload.com> are respectively identical and confusingly similar to the trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent may establish a right or legitimate interest in the disputed domain names by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(a) that it has made 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 prior to the dispute; or

(b) that it is commonly known by the domain name, even if it has not acquired any trademark rights; or

(c) that it intends to make 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.

By not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain names.

There is no relation, disclosed to the Panel, between the Respondent and the Complainant and Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use Complainant’s trademarks and name under any circumstance.

Similarity to AstraZeneca plc v. Dreamlight, WIPO Case No. D2005-1010, transferring <wwwastrazeneca.com>, the Panel finds that the Respondent knew that a significant proportion of Internet users would be deceived on the basis of “initial interest confusion”. The fact that, upon arriving at the web site and/or after a certain amount of further investigation, some users might be disabused is to be considered irrelevant since, by that time, the Respondent would have obtained its commercial business opportunity, an opportunity that the Respondent might well not otherwise have obtained had he adopted a domain name not confusingly similar to a registered trademark.

Initial interest confusion has been discussed in prior UDRP decisions and the Panel finds that amongst all cases dealing with initial interest of Internet users, the addition of “www” as prefix of a well known registered trademark has deprived the Respondent of any right or legitimate interests in respect of the domain name in issue.

On the “www” typoquatting issue, see also Pfizer, Inc. v. Seocho and Vladimir Snezko, WIPO Case No. D2001-1199, and Bayer Aktiengesellschaft v. Yongho Ko, WIPO Case No. D2001-0205, where it was stated that “the only difference being that ‘www’ has been inserted in front of the Pfizer mark, a practice known as a ‘typo’ or ‘typo squatting’, for the purpose of exploiting users’ typographical mistakes when seeking Complainant’s site, namely those users who erroneously omit the period between ‘www’ and ‘pfizer’.”

As to the domain name <musicload.cc> the Panel concurs with the views expressed in Sony Kabushiki Kaisha also trading as Sony Corporation v. Inja, Kil, WIPO Case No. D2000-1409, that “It is inconceivable that the Respondent could make any active use of the disputed domain name without creating a false impression of association with the Complainant. The Respondent was not authorized by the Complainant to use neither its mark nor the disputed domain name”.

Based on the record, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain names in bad faith:

(i) circumstances indicating that the holder has registered or has acquired 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 the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’ s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.

As to bad faith at the time of the registration, the Panel notes that the Respondent is active in the field of selling music via the Internet and is the owner of the domain name <jukebox24.com> corresponding to the web site “www.jukebox24.com” where Internet users can download music paying a fee and to which the disputed domain names were redirected. In light of the Respondent’s activities and the number of users and downloads of the Complainant’s web site at “www.musicload.de”, the Panel infers that the Respondent, at the time of registration of both domain names, knew of the prior trademark registrations of the Complainant and of its activities within the music business.

Furthermore, the Panel - in accordance with previous decisions issued under the Policy - is of the opinion that actual knowledge of Complainant’s trademark at the time of the registration of the disputed domain names may be considered an inference of bad faith (See Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).

With regard to bad faith use of the domain name <wwwmusicload.com>, the Panel finds paragraph 4(b)(iv) of the Policy to be applicable in this case, since the Respondent has attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s services.

As also stated in Trustmark National Bank v. Henry Tsung, WIPO Case No. D2004-0274, the Panel finds that “the Respondent has considered a predictable typing error that users could make by excluding the period that goes in between “www” and the second level domain name. That could not be anything else but a trick that Respondent has employed to circumvent the existing domain names that Complainant has registered”.

Previous panels have also considered “typosquating” as a circumstance evidencing bad faith. For example in InfoSpace.com, Inc. v. Registrar Administrator Lew Blanck, WIPO Case No. D2000-0069, the panel stated that the addition of “www” to a domain name is best explained as a deliberate attempt to exploit user’s typographical mistakes when seeking complainant’s web site, which has to be understood as bad faith under paragraph 4(a)(iii) of the Policy. As stated in Automobiles Peugeot SA v. Good Domains, Formerly Domains For Sale Inc. WIPO Case No. D2002-0805, the Respondent’s registration of <wwwpeugeot.com>, a misspelling of complainant’s registered mark is a circumstance evidencing bad faith. See also PNC Financial Services Group, Inc., and PNC Bank, N.A. v. Domains For Sale Inc., NAF Case No. FA0201000104101, transferring the domain name <wwwpncbank.com>, Prada S.A. v. Domains For Sale Inc., WIPO Case No. D2002-0512, transferring the domain name <wwwprada.com>, AltaVista Co. v. Stoneybrook and Stonybrook Investments, WIPO Case No. D2000-0886, transferring <wwwalavista.com>, and Dow Jones & Co. & Dow Jones, L.P. v. Powerclick, Inc., WIPO Case No. D2000-1259, transferring domain names <wwwdowjones.com>, <wwwwsj.com>, <wwwbarrons.com> and <wwwbarronsmag.com>.

Paragraph 4(b)(iv) of the Policy was applicable also for the domain name <musicload.cc> - prior to the cease and desist letter of the Complainant - as evidenced in the documents provided to the Panel. However, the web site with the domain name <musicload.cc> is currently not actively used. The Panel finds that such “passive holding” after a cease and desist letter was sent to the Respondent may be considered a circumstance evidencing bad faith. As established in a number of prior cases, the concept of “bad faith use” in accordance with paragraph 4(b) of the Policy includes not only positive action but also passive holding; see the landmark case Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

In view of the above, the Panel finds that the Respondent has registered and used the domain names in bad faith in accordance with paragraph 4(a)(iii) of the Policy.

 

7. Decision

In light of the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel decides that (a) the domain name <musicload.cc> is identical and the domain name <wwwmusicload.com> is confusingly similar to the Complainant’s trademarks; (b) the Respondent has no rights or legitimate interests in respect of the domain names and (c) that the domain names have been registered and used in bad faith.

Accordingly, the Panel requires that the registration of the domain names <musicload.cc> and <wwwmusicload.com> be transferred to the Complainant.

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Luca Barbero
Sole Panelist

Date: April 12, 2006