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and Mediation Center
Deutsche Telekom AG v. Avericom
Case No. D2006-0949
1. The Parties
The Complainant is Deutsche Telekom AG, Bonn, Germany, represented by Lovells, Germany.
The Respondent is Avericom, West Berlin, New Jersey, United States of America.
2. The Domain Name and Registrar
The disputed domain name <tmobilepodcast.com>
is registered with DSTR Acquisition PA I, LLC dba DomainBank.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2006. On July 28, 2006, the Center transmitted by email to DSTR Acquisition PA I, LLC dba DomainBank.com a request for registrar verification in connection with the domain name at issue. On August 4, 2006, DSTR Acquisition PA I, LLC dba DomainBank.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 August 7, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was August 27, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 28, 2006.
The Center appointed Gabriel F. Leonardos as the sole
panelist in this matter on August 31, 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
Complainant is Europe’s largest telecommunications company and one of the worldwide engines of innovation in the industry. 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’s subsidiary T-Mobile International AG & CO KG is one of the largest GSM mobile communications providers in the world. T-Mobile USA is one of the largest growing wireless service providers in the USA, offering all digital voice, messaging and high-speed wireless data services to more than 17.3 million customers.
The name T-Mobile is recognized and relied upon as identifying the Complainant. T-Mobile is the corporate name under which the Complainant’s business in the mobile communication sector is conducted.
Complainant has registered a large number of trademarks worldwide reflecting the terms T-Mobile and T-Mobil, for instance the following registrations:
IR 680034 and IR 680035
The Complainant and its subsidiary T-Mobile USA have registered and use among others the domain names <t-mobile.com>; <tmobile.com>; <t-mobile.net> and <tmobile.net>.
Before bringing the case to the WIPO administrative
panel the Complainant put Respondent on notice of Complainant’s claim
by virtue of a demand letter sent via mail and e-mail to the address indicated
in the Whois database on June 6 and June 28, 2006. However, the Respondent
has not replied to the Complainant’s demand letter and subsequent reminder.
5. Parties’ Contentions
Complainant contends that Respondent is using a domain name that is identical or confusingly similar to the mark T-MOBILE owned by the Complainant. The only difference is the omission of the hyphen and the addition of the generic term “podcast” that not only fails to give to the domain name any distinctiveness in relation to Complainant’s marks, but also increases the risk of confusion because “podcasting” is part of telecommunications and media field in which the Complainant is engaged. Thus, the public is likely to assume that <tmobilepodcast.com> denotes Complainant’s services.
Complainant also argues that Respondent has no right or legitimate interests in respect of the domain name, because Respondent has never used the domain name in connection with a bona fide offering of goods or services as it resolves to a website upon which a variety of domain names are for sale.
Finally, Complainant holds that the domain name was registered and is being used in bad faith because Respondent does not conduct any legitimate commercial or non commercial business or activity on the website; and, given the trademark registrations for “T-MOBILE”, its international reputation in the telecommunication business, it is not plausible that Respondent could legitimately use the domain name, and it is not plausible that the Respondent could have been unaware of T-Mobile at the time it registered the disputed domain name <tmobilepodcast.com>.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
According to paragraph 4(a) of the Policy the Complainant must prove each of the following:
(i) that the domain name registered by the Respondent is identical or confusingly similar to the trademarks or service marks in which the Complainant has rights; and
(ii) that the Respondent has no rights or no legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is used in bad faith.
A. Identical or Confusingly Similar
The Complainant has trademark registration for T-MOBILE worldwide, and, even though more relevant under the second and third test of the UDRP, the Panel notes that such registrations pre-date the Respondent’s registration of the disputed domain name created on March 28, 2005.
The only differences between the disputed domain name and the Complainant’s trademark T-MOBILE is the omission of the hyphen and the addition of the generic term “podcast” that not only fails to give to the domain name any distinctiveness in relation to Complainant’s mark, but also increases the risk of confusion because “podcasting” is an activity common in the telecommunications and media field in which the Complainant is engaged.
In effect, there is no doubt that “podcast” is indeed a generic term, see the on-line encyclopedia Wikipedia http://en.wikipedia.org/wiki/Podcasting:
“Podcasting the method of distributing multimedia files, such as audio or video programs, over the Internet using syndication feeds, for playback on mobile devices and personal computers. The term (a portmanteau), was coined in 2004 combining ‘iPod’, a popular portable audio device, and ‘broadcasting’.
The term podcast, like ‘radio’, can mean both the content and the method of delivery. The host or author of a podcast is often called a podcaster. Though podcasters’ web sites may also offer direct download or streaming of their content, a podcast is distinguished from other formats by its ability to be downloaded automatically using software capable of reading feeds like RSS or Atom.
Usually a podcast features one type of ‘show’, with new episodes released either sporadically or at planned intervals such as daily or weekly. In addition, there are podcast networks that feature multiple shows on the same feed.”
The domain name <tmobilepodcast.com> starts with the expression “tmobile” that can be considered identical to Complainant’s trademark T-MOBILE, and the mere addition of the generic term “podcast” to a known mark such as T-Mobile is not sufficient to distinguish the domain name from the Complainant’s trademark.
In this context, the Panel finds that the domain name <tmobilepodcast.com> meets the Policy requirement and is confusingly similar to Complainant’s registered trademark T-MOBILE.
B. Rights or Legitimate Interests
The Panel understands that under paragraph 4(a)(ii)
of the Policy the overall burden of proof is on Complainant. However, once the
Complainant presents a prima facie evidence that the Respondent lacks
rights or legitimate interest the burden shifts to the Respondent as already
seen in Julian Barnes v. Old Barn Studios Limited, WIPO
Case No. D2001-0121; and Belupo d.d. v. Wachem d.o.o WIPO
Case No D2004-0110.
Complainant’s registration and use of the trademark T-MOBILE pre-date the Respondent’s registration of the confusingly similar domain name <tmobilepodcast.com>. The Panel agrees that it was indeed likely that the Respondent was aware of the Complainant’s trademark at the time of registration and subsequent use of the disputed domain name.
In addition, it has been shown that Respondent appears not to run any legitimate business associated with the disputed domain name. In fact, the domain name is directed to a website upon which domain names are for sale. Accordingly, the use of the domain name <tmobilepodcast.com> is not considered legitimate use in connection with a bona fide offering of goods and services.
Respondent has not filed any Response to the Complaint and thus has not provided any other evidence or elements to justify any rights or legitimate interest in connection with the disputed domain name. Therefore, the Panel has found no indication in the evidence it received that any of the circumstances described in paragraph 4(c)(i)(iii) of the Policy could apply to the present matter.
Accordingly, the Panel finds the Complainant has presented prima facie evidence in relation to the second element of the Policy.
Given the circumstances the Panel finds that Respondent has no right or legitimate interest in respect of the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy specifies certain non exhaustive circumstances which, if found by the Panel to be present, are evidence of the registration and use of the domain name in bad faith.
The Complainant’s trademark is indeed widely known and the Panel considers that the Respondent had knowledge of the trademark T-MOBILE owned by the Complainant when registered the disputed domain name on March 28, 2005. This is further corroborated by the fact that the disputed domain name <tmobilepodcast.com> contains in its entirety the Complainant’s trademark T-MOBILE with the omission of the hyphen and the addition of the generic term “podcast”.
It is most unlikely that the Respondent registered the disputed domain name not knowing of the Complainant’s mark. Furthermore, the Respondent has not presented any reasons, evidence or arguments of a legitimate interest in using or registering the disputed domain name. The Respondent has not, since registering the domain name, set up a web-page indicating any preparations to use the domain name, nor has in any other way seemingly made use of the domain name other than offering for sale the domain name, which in itself cannot demonstrate a legitimate interest or right in, or bona fide use of, the domain name.
Concerning use of the domain name, the Complainant produced some web page printouts which demonstrate that on May 23, 2006, the domain name <tmobilepodcast.com> was directed to a website upon which several domain names were offered for sale. Through said website, amongst 1,280 other Podcast domain names are offered for sale.
In the Panel’s opinion the Respondent, by such use, intentionally attempted to attract Internet users expecting to reach the website corresponding to the Complainant’s trademark to another online location by creating a likelihood of confusion with the Complainant’s trademark. By doing so the Respondent seeks to promote its activity of selling domain names. Moreover by exploiting the renown of a domain name reflecting the well-known T-MOBILE trademark, the Respondent seeks to gain profit out of the domain name.
Furthermore, the Respondent obviously registered the domain name in dispute for the purpose of selling the name, as the above domain name was offered for sale to the general public. The Panel considers that the above mentioned circumstances indicate bad faith.
For the mentioned reasons, the Panel finds that the Respondent has registered
the disputed domain name in bad faith. The Panel therefore concludes that the
Complainant has proven that the Respondent was acting in bad faith pursuant
to paragraph 4(a)(iii) of the Policy.
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, <tmobilepodcast.com> be transferred to the Complainant.
Gabriel F. Leonardos
Dated: September 14, 2006