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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Deutsche Telekom AG v. Maggie Eliger

Case No. D2008-0173

 

1. The Parties

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

The Respondent is Maggie Eliger, of Israel.

 

2. The Domain Name and Registrar

The disputed domain name <t-mobile-cg.mobi> is registered with GoDaddy.com, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2008. On February 4, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On February 4, 2008, GoDaddy.com, Inc. 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 February 7, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 27, 2008. The Respondent did not submit any formal response but sent a letter to the Center on February 15, 2008 stating that it agreed to cancel the ownership of the contested domain name.

Because of the communication of the Respondent, the Center contacted the Complainant asking if it wished to request a suspension of the proceeding to explore a settlement.

The Complainant, with letter dated February 27, 2008, informed the Center that it did not want to suspend the proceeding, but intended to continue it.

Accordingly, the Center notified the Respondent’s default on February 28, 2008.

The Center appointed Nicoletta Colombo as the sole panelist in this matter on March 11, 2008. 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 following uncontested facts are found by the Panel and established as true.

The Complainant is one of Europe’s largest telecommunications companies. It serves customers in more than 65 countries around the world through regional units. The Complainant owns several trademarks in particular:

– T-MOBILE in the United States of America No. 2282432 filed on February 27, 1997, and covering products and services in several classes like class 9;

– T MOBILE in particular device in the United States of America No. 2284387 filed on February 27, 1997 and covering products and services in several classes like class 9;

– T-MOBILE in the European Union No. EU 000485441 filed on Febraury 26, 1997;

– T-MOBILE as international trademark No. 680034 filed on February 26, 1997;

– T MOBILE in particular device as international trademark No. 680035 filed on February 26, 1997.

The Complainant is also the owner of several domain names like: <t-mobile.com>, “.us”, “.net”, “.co.uk”, “.de”, <tmobile.com>, “.us”, “.net”, “.co.uk”, “.de” and also <t-mobile-cg.com>.

The disputed domain name <t-mobile-cg.mobi> was registered in the name of the Respondent on October 2, 2006.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are applicable to the domain name subject of this dispute.

In relation to element (i) of paragraph 4(a) of the Policy, the Complainant contends that the domain name in dispute is a misrepresentation by implying that the domain name is somewhat connected with, associated or authorized by the Complainant while, in fact, it is not. The affix “cg” which stands for Crna Gora (Montenegro in Serbian) does not diminish the risk of confusion.

According to numerous WIPO UDRP decisions, the addition of a generic word is insufficient to give any distinctiveness to the domain name, with the conclusion that the disputed domain name is confusingly similar to the trademarks of the Complainant.

In relation to element (ii) of paragraph 4(a) of the Policy, the Complainant contends that the Respondent has no rights or legitimate interests in respect to the domain name. The Respondent has never been a representative or licensee of the Complainant and has never been authorized to use the trademark T-Mobile. Moreover there is no indication that the Respondent is known by the name “t-mobile-cg.mobi”.

The Complainant states that the Respondent does not use the disputed domain name for bona fide offering of goods and services and is not making a legitimate non-commercial or fair use of it; in particular the Respondent offered sponsored links under the disputed domain name.

In relation to element (iii) of paragraph 4(a) of the Policy, the Complainant contends that evidence of bad faith registration and use is established by the following circumstances.

The Respondent at the time of the registration of the contested domain name was surely aware of the trademarks of the Complainant taking into consideration that T-Mobile International AG & Co. is worldwide known and provides its service to nearly 112 million customers worldwide. According to the Complainant, the Respondent registered the domain name primarily for the purpose of selling it; in fact the Respondent offered the disputed domain name to the Complainant immediately after receiving a cease and desist letter.

The Complainant requests the Panel to transfer the disputed domain name to it.

B. Respondent

The Respondent did not reply to the Complainant’s contentions properly but sent two letters only by e-mail and not in hard copy to the Center. With the letter dated February 15, 2008, the Respondent declared that she agreed that <t-mobile-cg.mobi> was protected by laws of trademark and agreed to cancel the ownership of it. With letter dated February 29, 2008, she declared that she purchased the disputed domain name among others without knowing that it was a trademark name confirming her willingness to release the domain name.

She did not give any proof of her allegations.

It is the opinion of the Panel, that theoretically the Respondent may be considered not to be in default, having submitted a first communication by e-mail. Moreover, the Panel considers to accept and to take into consideration the second communication of the Respondent although filed after the required timelines (see UPIB, Inc. v. Texas Internet, WIPO Case No. D2004-0073; Six Continents Hotels, Inc. v. Seweryn Nowark, WIPO Case No. D2003-0022).

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant is the owner of several T-MOBILE trademarks which are not exactly identical to the domain name in dispute, but where the only difference between the disputed domain name and the trademarks of the Complainant is the addition of the affix “cg” which stands for Crna Gora – Montenegro in Serbian. This addition does not constitute a distinctive element to the disputed domain name, but compounds the likelihood of confusion between the domain name and the Complainant’s trademarks.

There are several UDRP decisions stating that confusing similarity, for the purposes of the Policy, is established when a domain name wholly incorporates a complainant’s mark and only adds a generic word (see i.e., Accor v. Howell Edwin, WIPO Case No. D2005-0980; Sociйtй del Hфtels Mйridien v. Mr. Cuneyt Ozarici, WIPO Case No. D2005-0201; ACOR, Society Anonyme a Directoire et Conseil de Surveillance v. SEOCHO, WIPO Case No. D2002-0517; Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046).

The addition of the generic top level domain extension “.mobi” does not eliminate the confusion (see Sociйtй des Bains de Mer et du Cercle des Etrangers а Monaco v. Grande Media, WIPO Case No. D2007-0840; Crйdit Industriel et Commercial S.A v. Name Privacy, WIPO No. D2005-0457).

There is no doubt that the domain name <t-mobile-cg.mobi> is confusingly similar to the trademarks of the Complainant. Therefore, the Panel finds that the Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

The Complainant has several trademarks registrations for T-MOBILE. Therefore it has been proved that the Complainant has right in the T-MOBILE trademark.

The Complainant has not licensed or otherwise permitted or authorized the Respondent to use its trademark, or to apply for or to use the domain name incorporating said mark.

The Respondent has not submitted any evidence to demonstrate any rights or legitimate interests in the disputed domain name, and there is prima facie indication in the case file that there are no rights or legitimate interests on the part of the Respondent in the domain name, see paragraph 4(c) of the Policy (see Sociйtй des Bains de Mer et du Cercle des Etrangers а Monaco v. Grande Media, WIPO Case No. D2007-0840; UPIB, Inc. v. Texas Internet, WIPO Case No. D2004-0073).

Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name and under these circumstances, finds that the Complainant has satisfied the second element of the Policy.

C. Registered and Used in Bad Faith

Based on the evidence presented by the Complainant, the Panel considers that the Respondent registered and used the disputed domain name in bad faith.

As sufficient evidence of registration in bad faith, the Panel finds that the Respondent registered the contested domain name (which corresponds to a widely known trademark with the addition of the affix “cg” which stands for Crna Gora – Montenegro in Serbian) most probably with knowledge of the Complainant’s rights. Only someone who was familiar with the Complainant’s marks would have registered the confusingly similar domain name (see Aventis, Aventis Pharma SA. v. John Smith, WIPO Case No. D2004-0850; AT&T Corp. v. Xinzhiyuan Management Consulting Co., Ltd., WIPO Case No. DCC2004-0001; 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).

It has to be added that the contested domain name resolves to a website where sponsored links were offered and therefore there is no doubt that the Respondent is using it in bad faith. This circumstance is commonly understood as registration and use in bad faith.

Moreover the Respondent, when in receipt of the cease and desist letter from the attorney of the Complainant, declared that the only reason in having such a domain name amongst others was to profit from it, specifying that the contested domain name was on sale and asking to the attorney of the Complainant to encourage its client to make an offer (see annex I of the Complaint).

There are several UDRP decisions stating that it is evidence for the registration and use of a domain name in bad faith if the Respondent has registered the domain name primarily for the purpose of selling it, like in this case (see Audi AG v. Jose Santos, WIPO Case No. D2007-0344; Laboratoire Nutergia v. Jeongyong Cho, WIPO Case No. D2007-1582; V&S Vin&Sprit AB v. Stefan Bojahr, WIPO Case No. D2005-0750; National Collegiate Athletic Association v. Dusty Brown, WIPO Case No. D2004-0491; The Nasdaq Stock Market, Inc., v. Hamid Reza Mohammad Pouran, WIPO Case No. D2002-0770; Infotechnology Pty Ltd v. Estore Pty Ltd, WIPO Case No. D2002-0069).

At last, the Panel considers the letters sent by the Respondent to the attorney of the Complainant and to the Center as a new strategy enacted to try to make the third element of the Policy, registration in bad faith, fail. In fact, reading the letter sent to the attorney of the Complainant, it is easy to understand that the Respondent on one side says that she was aware of numerous Internet frauds but she was not aware that the contested domain name was formed by a famous trademark and, on the other side, she said that she is in the domain names business to make some profit from it, and offered the contested domain name for sale.

At the same conclusion arrives the Panel reading the two letters sent by the Respondent to the Center in which she declares, without giving any evidence, that the Respondent has purchased the contested domain name among others without knowing that it was a worldwide known trademark.

Taken into account all of the above, the Panel believes that the Complainant has satisfied the third element of the Policy in demonstrating bad faith registration and use of the domain name.

 

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, <t-mobile-cg.mobi>, be transferred to the Complainant.

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Nicoletta Colombo
Sole Panelist

Dated: March 25, 2008