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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Deutsche Telekom AG v. Pavel Elpl

Case No. D2006-0323

 

1. The Parties

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

The Respondent is Pavel Elpl, Praha, Czech Republic.

 

2. The Domain Name and Registrar

The disputed domain name <tmobilepictureworld.com> is registered with DSTR Acquisition VII, LLC d/b/a Dotregistrar.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2006. On March 15, 2006, the Center transmitted by email to DSTR Acquisition VII, LLC d/b/a Dotregistrar.com a request for registrar verification in connection with the domain name at issue. On March 22, 2006, DSTR Acquisition VII, LLC d/b/a Dotregistrar.com 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 March 27, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 16, 2006. On March 3, 2006, the Respondent sent an email communication to the Center in the Czech language, and was advised, via the Center’s response to him on the same date, that the language of the proceeding was English, the language of the Registration Agreement.

The Respondent did not submit a proper response. Accordingly, the Center notified the Respondent’s default on April 19, 2006.

The Center appointed Kristiina Harenko as the sole panelist in this matter on April 25, 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.

 

4. Factual Background

The trademark upon which the Complaint is specifically based is the registered International Trademark T-MOBILE, registered on February 26, 1997, registration no. IR 00680034. An extract from the online trademark database DEMASWEB was attached to the Complaint.

The Complainant is also holder of the European Community Trademark T-MOBILE, registration no. EM00485441, with a priority date of February 26, 1997, and of the German Trademark T-MOBILE, registration no. DE39638168, with a priority date of August 31, 1996. The printouts from the DEMASWEB database were attached to the Complaint.

According to the DotRegistrar Whois database, the disputed domain name <tmobilepictureworld.com> was registered on July 14, 2005.

 

5. Parties’ Contentions

A. Complainant

Trademarks/Service Marks

The Complainant is Europe’s largest telecommunications company and one of the worldwide engines of innovation in the industry. The Complainant contends that this makes Deutsche Telekom one of the few telecommunications companies in the world to offer genuinely integrated solutions from a single source. The Complainant is continuously driving ahead the internationalization of the Deutsche Telekom Group with a variety of strategic shareholdings.

The Complainant has 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 contends that the Complainant’s subsidiary T-Mobile International AG & Co. KG is one of the largest GSM mobile communications providers in the world. The name T-MOBILE is universally recognized and relied upon as identifying the Complainant.

The Complainant has registered a large number of national, community and international trademarks reflecting the terms “T-Mobile” and “T-Mobil”. According to the Complainant, the Complainant and its subsidiary T-Mobile have registered and use the following Internet domain names: <t-mobile.com>, <tmobile.com>, <t-mobile.net>, <tmobile.net>, <t-mobile.cz> and <tmobile.cz>.

Identity/Confusing Similarity

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark T-MOBILE on the following grounds:

(i) The domain name at issue substantially incorporates the Complainant’s trademark T-MOBILE. The Complainant refers to former UDRP panel decisions Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Chanel, Inc. v. Estco Technolog Group, WIPO Case No. D2000-0413; and Welch Foods Inc. v. USCYB, WIPO Case No. D2001-1072.

(ii) The domain name consists of the Complainant’s famous trademarks on the one hand and a common or generic term on the other hand. Also, in this respect, the Complainant refers to former panel decisions including, among others, Nokia Corporation v. Horoshiy, Inc. v. LaPorte Holdings, WIPO Case No. D2004-0851; PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.i) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696; and Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409. The Complainant points out that confusing similarity applies to this case in particular, as the trademark T-MOBILE is well-known around the world.

(iii) Lastly, the Complainant contends that the fact that the disputed domain name has a different capitalization and hyphenation has no effect in this case. According to earlier decisions, the first level domain does not influence the consideration of similarity (Deutsche Telekom AG v. Dominsforlife.com, WIPO Case No. D2002-0164). The same applies to the use or absence of hyphens in the trademarks or domain names since “this distinction does not change the likelihood of confusion” (BJC Deutschland GmbH & Co. KG v. Paul Tweed, WIPO Case No. D2000-0418).

No rights or legitimate interests

The Complainant contends that the Respondent is not, and never has been, a representative or licensee of the Complainant, nor is the Respondent otherwise authorized to use the Complainant’s marks.

The Respondent does not use the disputed domain name for a bona fide offering of goods or services and is not making a legitimate non-commercial or fair use of it. Having inserted the disputed domain name as URL-address, the user was earlier directed to the Complainant’s official website “www.t-mobile.com” but currently, a website shows up saying that the user is not allowed to view the page <tmobilepictureworld.com>. The printouts of the former and current websites were attached to the Complaint.

The Complainant contends that the Respondent does not show any legitimate interest in the use of the disputed domain name. In particular, none of the circumstances listed under paragraph 4(c) of the Policy, possibly demonstrating rights or legitimate interests, is given. The domain name does not appear to be in use for any bona fide offering of goods or services and there is no indication that the Respondent was known by the name T-MOBILE prior to the registration of the domain name.

Bad faith

The Complainant states that the Complainant’s authorized representatives sent to the Respondent a “cease and desist” letter via mail and email on January 5, 2006, to the address indicated in the Whois database. In this letter, the Respondent was requested to transfer the domain name to the Complainant and prohibited from registering any further domain names containing the word T-MOBILE or any confusingly similar term. While the letter was returned to the Complainant with the remark that it was undeliverable, the Respondent answered the letter via email on January 7, 2006, accepting the settlement proposal and agreeing to the transfer of the domain name that the Complainant’s authorized representative had proposed. Then, on January 23, 2006, the Complainant received another email from the Respondent. Therein, the Respondent suddenly announced that he would only agree with the settlement proposal, if the Complainant would accept a financial compensation of EUR 30,000.00.

The disputed domain name has been used since its registration.

The Complainant further contends that the Complainant’s subsidiary, T-Mobile International, is one of the largest GSM mobile communications providers in Europe and the world. This shows not only the good will and reputation of the Complainant’s trademark T-MOBILE in various countries but also that it seems very unlikely that the Respondent was not aware of the Complainant’s business T-MOBILE when registering the domain name.

Although, the user was formerly directed to the Complainant’s official website when inserting the disputed domain name as URL-address, the Complainant was always concerned that the Respondent might alter the existing transmission to the Complainant’s website. Later, the Complainant’s concern came true and currently, when a user inserts the disputed domain name, a website shows up saying that the user is not allowed to view the page <tmobilepictureworld.com>

The Complainant contends that the disputed domain name has been registered and is being used in bad faith on the following grounds:

(i) When registering the domain name, the Respondent had knowledge of the Complainant’s trademarks. This is evident, given the worldwide fame of the Complainant’s trademarks. The Complainant refers to former panel decisions British Sky Broadcasting Group plc, v. Mr. Pablo Merino and Sky Services S.A., WIPO Case No. D2004-0131; Deutsche Telekom AG v. Britt Cordon, WIPO Case No. D2004-0487; and PepsiCo, Inc. v. Paul J. Swider, WIPO Case No. D2002-0561. Furthermore, the Respondent’s knowledge of the trademarks is corroborated by the fact that he had knowledge of the Complainant’s official website when he registered the domain name by directing internet users to the Complainant’s official site.

(ii) The disputed domain name has also been used in bad faith by the Respondent. There is still an active use of the disputed domain name, because the Respondent conceals the content of the website for other users. Moreover, the Respondent tried to offer the website for sale for EUR 30,000.00. This indicates that the Respondent had registered the domain name primarily with the purpose of selling the domain name for a price exceeding his out-of-pocket-costs. This is corroborated by the fact that the email address of the Respondent includes the word “domainforsale”. This is a strong indication that the Respondent primarily registered the disputed domain name for the purpose of selling, renting or otherwise transferring it to the Complainant. In this respect, the Complainant, refers to former panel decisions Sud-Chemie AG v. Suedchemie.com, WIPO Case No. D2002-0970; Allee Willis v. NetHollywood, WIPO Case No. D2004-1030; Telefonaktiebolaget L.M. Ericsson v. iNuntius Inc., WIPO Case No. D2005-0732; and Zurich Insurance Company v. Domains for sale WIPO Case No. D2001-1423.

(iii) Lastly, the Complainant refers to the fact the Respondent has declared a wrong contact address in the Whois database, which also indicates bad faith. See Grupo Televisa, S.A., deC.V et al. v. Autosya S.A. de C.V., et al., WIPO Case No. DTV2001-0007; A.H. Belo Corporation v. King TV and 5 Kings, WIPO Case No. D2000-1336; and BellSouth Intellectual Property Corporation v. Texas Internet, WIPO Case No. D2002-0559.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

Paragraph 15 of the Rules prescribes that the Panel shall decide a Complaint on the basis of the statements made and documents submitted and in accordance with the Policy, the Rules and any principles of law that it deems applicable.

In the case of default by a party, paragraph 14 of the Rules prescribes that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or a requirement under, these rules, the Panel shall draw such inferences therefrom as it considers appropriate. In this case, the Respondent has not submitted any Response and has consequently not, despite the opportunity given, contested any of the contentions made by the Complainant. The Panel will therefore consider the case on the basis of the Complaint and the documents available to support the contentions.

As confirmed by the Registrar Verification, the Policy is applicable to this case. Consequently, the Respondent is required to submit to a mandatory administrative proceeding as now initiated in respect of the domain name at issue.

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

- 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,

- that the Respondent has no rights or legitimate interests in the domain name, and

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

A. Identical or Confusingly Similar

According to paragraph 4(a)(i) of the Policy, the Complainant has to prove that the domain name at issue is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights.

The Complainant is the owner of registered trademark T-MOBILE. Adding a common or a generic term, such as “picture” and “world” to a well-known mark does not sufficiently distinguish the domain name from the Complainant’s trademark and change the overall impression of the designations as being a domain name connected to the Complainant. Likewise, the different capitalization and hyphenation do not prevent confusion. Therefore, the Panel concludes that the disputed domain name <tmobilepictureworld.com> is confusingly similar to the Complainant’s protected trademark T-MOBILE .

B. Rights or Legitimate Interests

In this respect, the Complainant has, according to paragraph 4(a)(ii) of the Policy, to prove that the Respondent has no rights or legitimate interests in the domain name at issue.

The Complainant has contended that the Respondent is not and has never been, a representative or licensee of the Complainant, nor is the Respondent otherwise authorized to use the Complainant’s trademarks. Neither is there evidence connecting the use of the domain name with a bona fide offering of goods or services. There is no indication that the Respondent was known by the name T-MOBILE prior to the registration of the domain name.

To support its contentions in this respect, the Complainant has invoked a number of circumstances, supported by documentary evidence. Despite the opportunity given, the Respondent has not, in the proper manner and language, contested or commented upon the contentions by the Complainant.

On the basis of these circumstances, the Panel is satisfied that the evidence submitted by the Complainant sufficiently supports its contention that the Respondent has no rights or legitimate interests in the domain name at issue.

C. Registered and Used in Bad Faith

In accordance with paragraph 4(a)(iii) of the Policy, the Complainant has to prove that the domain name has been registered and is being used in bad faith. Paragraph 4(b) sets out circumstances which in particular, but without limitation can, if found by the Panel to be present, be considered as evidence of registration and use of a domain name in bad faith.

The Complainant contends that:

(i) When registering the domain name, the Respondent had knowledge of the Complainant’s trademarks. This is evident, given the worldwide fame of the Complainant’s trademarks. The Complainant’s knowledge of the trademarks is corroborated by the fact that he had knowledge of the Complainant’s official website when he registered the domain name by directing internet users to the Complainant’s official site.

(ii) The disputed domain name has also been used in bad faith by the Respondent. There is still an active use of the disputed domain name, because the Respondent conceals the content of the website for other users. Moreover, the Respondent tried to offer the website for sale for EUR 30,000.00. This indicates that the Respondent had registered the domain name primarily with the purpose of selling the disputed domain name for a price exceeding his out-of-pocket-costs. This is corroborated by the fact that the email address of the Respondent includes the word “domainforsale”. This is a strong indication that the Respondent primarily registered the disputed domain name for the purpose of selling, renting or otherwise transferring it to the Complainant.

(iii) The Respondent has declared a wrong contact address in the Whois database, which also indicates bad faith.

Considering the above-mentioned circumstances, the Panel makes a reasonable inference that the disputed domain name was registered primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant for valuable consideration in excess of the documented out-of-pocket costs.

The Respondent has not, in the proper way and language, despite the opportunity given, contested the Complainant’s contentions. On the basis of these circumstances, the Panel is satisfied that the evidence submitted by the Complainant sufficiently supports a finding that the disputed domain name was registered and is being used in bad faith.

 

7. Decision

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 name <tmobilepictureworld.com> be transferred to the Complainant.


Kristiina Harenko
Sole Panelist

Dated: May 9, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2006/d2006-0323.html

 

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