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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Deutsche Telekom AG v. Kaweh Kalirad
Case No. DIR2008-0002
1. The Parties
The Complainant is Deutsche Telekom AG, of Bonn, Germany, represented by Lovells, Germany.
The Respondent is Kaweh Kalirad, of Teheran, Islamic Republic of Iran.
2. The Domain Names and Registrar
The disputed domain names are <t-com.ir>, <telekom.ir>, <t-mobile.ir>, <t-online.ir>, (collectively the “Domain Names”), are registered with IRNIC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2008. On February 22, 2008, the Center transmitted by email to IRNIC a request for registrar verification in connection with the domain names at issue. On February 24, 2008, IRNIC 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 .ir Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir 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 5, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 25, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 26, 2008.
On March 26, 2008, the Center received an email from the Respondent in response to the Notice of Respondent’s Default. The email simply said “I am not the owner of [the Domain Names].” It was emailed from the Respondent’s email address email@example.com, and contained references (in German language) to the Center’s email which had accompanied the Notice of Respondent’s Default.
The Center appointed Warwick Smith as the sole panelist in this matter on April 3, 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.
By Procedural Order No. 1 dated April 8, 2008, the Panel, acting pursuant to Rule 11(b) of the Rules, ordered the Complainant to provide English translations of certain German language documents which were annexed to the Complaint. The translations were duly provided within the time allowed by the Panel, and they have been taken into account by the Panel in coming to its decision in the case.
4. Factual Background
The following (uncontested) facts are taken from the Complaint.
The Complainant is Europe’s largest telecommunication company. It serves customers in more than 65 countries around the globe through regional units, and it has more than 2,000,000 shareholders. Over the past 2 years, it has completed or initiated transactions amounting to US$66 billion. The Complainant’s subsidiary T-Mobile International AG & Co KG, is one of the largest GSM mobile communication providers in the world.
The Complainant holds trade marks and service marks relevant to this Complaint, as follows:
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International Registration Number
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The trade marks referred to above are registered for numerous goods and services in a number of International Classes. The respective registration dates for the international registrations listed above, were December 18, 2000, February 26, 1997, January 11, 1996, and November 5, 1999.
The Complainant has registered and used the following Internet domain names: <telekom.com/.us/.co.uk/.de>, <t-mobile.com/.us/.net/.co.uk/.de>, <t-online.com/.us/.net/.co.uk/.de>, and <t-com.us/.net/.co.uk/.de>.
The Domain Name <telekom.ir> was registered on August 31, 2004, and the other three Domain Names were all registered on October 7, 2004.
There is very little stated in the Complaint about the Respondent or his activities. The Complaint simply asserts that the Respondent is domiciled in Germany, based on the following facts:
1. The Respondent had provided a German mobile telephone number in the Whois database entries for the Domain Names, as they stood on July 30, 2007. The Complainant’s representative was able to telephone the Respondent and talk to him on that number, and obtained from the Respondent an address in Bielefeld, Germany, to which written communications could be sent.
2. The Respondent received a letter which the Complainant’s representative sent to the Bielefeld address. (The Complainant produced a copy of a cease and desist letter dated January 21, 2008 from the Complainant’s representative to the Respondent, addressed to the Bielefeld address. The letter alleged infringement of the Complainant’s trade mark registrations, and requested the transfer of the Domain Names to the Complainant. It also sought undertakings that the Respondent would not use the “designations” used in the Domain Names, or any similar designations that would be likely to lead to confusion, in the future. The Complainant also produced a copy of an “Advice of Delivery for National Mail” form for the letter, showing that it was received on behalf of the Respondent on January 23, 2008. Both documents were in the German language, but English translations have been provided by the Complainant pursuant to the Panel’s Procedural Order No. 1.)
3. The Complainant’s representative received a letter in response (dated February 6, 2008) from the Respondent’s German lawyers based in Cologne, Germany. This letter was in the German language, but again, a translation has been provided by the Complainant pursuant to Procedural Order No. 1.
The letter from the Respondent’s lawyers confirmed that they had been able to make contact with their client in Iran, and had clarified the facts of the case with him. The letter advised that the Respondent had sold the Domain Names to an Iranian buyer, before he received the letter from the Complainant’s representative. The letter advised that the Iranian buyer had filed applications with IRNIC to enter the change of ownership in the Whois register. The letter went on to say:
“Following a renewed request to post the real owner of the domains Iranic [sic], has informed that the pertinent legal change will be entered in the next few days. For this reason, claims against our client would not be valid.”
In accordance with normal practice, the Panel has keyed in the Domain Names to see if they resolve to an active website or websites. None of them did.
5. Parties’ Contentions
The Complainant contends:
1. Each of the Domain Names is confusingly similar to a corresponding trade mark owned by the Complainant. The Domain Names each incorporate the Complainant’s corresponding trade mark in full. That is sufficient to establish that the relevant Domain Names are confusingly similar to the Complainant’s corresponding registered trade mark.
2. The registration of the Domain Names constitutes a misrepresentation, by implying that the Domain Names are somehow connected or associated with, or authorized by, the Complainant. In fact, they are not.
3. The Respondent has no rights or legitimate interests in respect of any of the Domain Names. None of the circumstances listed under paragraph 4(c) of the Policy apply. The Respondent is not commonly known by any of the Domain Names, and 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 TELEKOM, T-MOBILE, T-ONLINE, or T-COM marks.
4. The Respondent does not use the Domain Names for a bona fide offering of goods or services, and is not making a legitimate non-commercial or fair use of them.
5. For the foregoing reasons, the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the Domain Names. The burden of proof of rights or legitimate interests thus moves to the Respondent (citing Deutsche Telecom AG v. Britt Cordon,
WIPO Case No. D2004-0487).
6. When registering the Domain Names, the Respondent had knowledge of the Complainant’s TELECOM, T-MOBILE, T-ONLINE, and T-COM trade marks. (The Respondent is domiciled in Germany, and the Complainant, a German Corporation which is one of the world’s biggest telecommunication service providers, is well-known worldwide. The Complainant’s trade marks had been registered for several years by the time the Respondent registered the Domain Names. Further, it is reasonable to conclude that only someone who was familiar with the Complainant’s mark would have registered identical domain names (citing British Sky Broadcasting Group plc v. Mr Pablo Merino and Sky Services SA,
WIPO Case No. D2004-0131).)
7. Registration within one week of only two confusingly similar domain names has been held to be sufficient evidence that the Respondent knew of the Complainant’s rights – see Grupo Televisa v. Party 1990 HT Inc aka Peter Carrington,
WIPO Case No. D2003-0228.
7. Registration of a domain name that is identical to a complainant’s famous mark and trade name is, in and of itself, evidence of bad faith (citing PepsiCo, Inc v. Paul J Swider,
WIPO Case No., D2002-0561). The Respondent therefore acted in bad faith in registering the Domain Names.
8. The Domain Names were registered within a short period of time, and three of them were registered on the one day (October 7, 2004). The Respondent has therefore engaged in a pattern of registering domain names comprising the Complainant’s famous trade marks.
Apart from the email dated March 26, 2008, in which he advised that he was not the owner of the Domain Names, the Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has proved this part of the Complaint.
First, it has established that it is the registered proprietor of the marks TELEKOM, T-MOBILE, T-ONLINE, and T-COM in Germany, and internationally under the Madrid system of international trade mark registration.
Secondly, the Domain Names are each identical or confusingly similar to one of those four marks. The Domain Name <telekom.ir> is clearly identical to the Complainant’s TELEKOM mark, and the <t-mobile.ir> Domain Name is identical to the Complainant’s T-MOBILE mark. Similarly, the <t-online.ir> and <t-com.ir> Domain Names, are respectively identical or confusingly similar to the Complainant’s T-ONLINE and T-COM marks.
The “.ir” suffix is generic, and numerous Panel decisions under the Uniform Domain Name Dispute Resolution Policy (“the UDRP”), (the relevant part of which is identical to paragraph 4(a)(i) of the Policy), have held that “.gtld” and “.cctld” suffixes are not taken into account in the comparison between a complainant’s trade mark and the disputed domain name.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, will be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(1) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable 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; or
(2) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(3) Where [the respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
If the circumstances are sufficient to constitute a prima facie showing by a complainant that the respondent lacks any rights or legitimate interests in the disputed domain name, the evidentiary burden shifts to the respondent to show, by plausible, concrete evidence, that he does have a right or a legitimate interest in the disputed domain name.
That approach is summarized at paragraph 2.1 of the Center’s online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, as follows:
“A Complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4 (a)(ii) of the UDRP”.
There is no relevant difference between paragraphs 4(i)(2) and 4(iii) of the Policy on the one hand, and the corresponding paragraphs of the UDRP on the other. The Panel therefore considers it appropriate to apply the same approach to the burden of proof as is set out in the extract from the Center’s online document quoted above.
In this case, the Complainant has established that the Domain Names are all identical to trade marks or service marks in which it has rights, and that it has not authorized the Respondent to use those marks, or any marks confusingly similar thereto, whether in the Domain Names or otherwise. There is nothing in the record to suggest that the Respondent, or any business operated by him, is commonly known by any of the Domain Names.
In those circumstances, the Complainant has made out a sufficient prima facie showing of “no rights or legitimate interests”, and the evidential burden shifts to the Respondent to demonstrate that he has some right or legitimate interest in one or more of the Domain Names. In fact, the Respondent expressly disavows any interest in the Domain Names, saying that he is no longer the owner. Consistent with that stance, he has not filed any Response. That would be enough on its own to decide this part of the Complaint, but the Panel also notes that there is nothing in the record to suggest that the Respondent has used any of the Domain Names (or names corresponding to them) in connection with any bona fide offering of goods or services, or made demonstrable preparations to do so. Nor is there anything to suggest that the Respondent has made some legitimate non-commercial or fair use of any of the Domain Names.
For the foregoing reasons, the Complainant must succeed under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [the respondent has] registered or 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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.
Unlike the corresponding provision in the UDRP, it is sufficient for a complainant under the Policy to prove bad faith registration or bad faith use. A complainant does not have to prove both.
The Complainant has also made out its case under this part of the Policy. The Panel has come to that view for the following reasons:
(i) The Domain Names are each identical to trade marks in which the Complainant has shown that it has rights, and the Respondent has no rights or legitimate interests in respect of any of the Domain Names.
(ii) In the absence of any response, the Panel infers that the Respondent was aware of the Complainant and its relevant marks (or its various domain names which correspond with those marks) when he registered the Domain Names in 2004 (or if he was not the original registrant, when he subsequently acquired them). The marks are very well known in Europe, and especially in Germany, and it appears that the Respondent resides or has resided in Bielefeld in that country. The spelling of “telekom” in the <telekom.ir> Domain Name (with the characteristic German use of the letter “k” rather than the letter “c”), also suggests that the registrant of that particular Domain Name had in mind the German telecommunication market when he registered the Domain Name. Anyone focusing on that market could hardly have been unaware of the Complainant. And the possibility of anyone registering four domain names within the space of 38 days, all identical with widely known trade marks owned by an international telecommunications company, without being aware of those trade marks, is sufficiently remote that it can be safely disregarded.
(iii) There is no evidence that the Respondent has ever used the Domain Names, and it appears that he may now have sold them. However, he remains the registrant, and is therefore the proper respondent to this Complaint. (IRNIC confirmed to the Center on February 24, 2008 that the Respondent was then the current holder of the Domain Name registrations, and that the Domain Names would remain “locked” during this proceeding. Under the Rules, the “domain-name holder” is the appropriate Respondent (see Rules, paragraphs 1 and 3(b)(viii)2), and the IRNIC advice of February 24, 2008 confirms that the correct party has been named as Respondent in this case. The advice in the February 6, 2008 letter from the Respondent’s German lawyers that “Iranic has informed that the pertinent legal change will be entered in the next few days”, appears to have been inaccurate. Either that or the change request was not actioned by IRNIC. In either event, the Respondent remains the appropriate respondent to the complaint, and the Complainant’s claims cannot be defeated by the unsubstantiated (and apparently incorrect) advice from the Respondent that he sold the Domain Names to an Iranian buyer prior to the commencement of this proceeding.)
(iv) In the absence of any explanation, the Panel infers that anyone who registered domain names such as the Domain Names, being aware that they were identical to the widely known trade marks of a third party, must have expected and intended that Internet users who came across the Domain Names and who were familiar with the third party and its marks, would assume that the Domain Names were those of the third party trade mark owner or were somehow connected with that trade mark owner. An intention to create such an incorrect impression, is a classic indicator of bad faith.
(v) The Panel accepts the Complainant’s submission based on PepsiCo, Inc v. Paul J. Swider,
WIPO Case No. D2002-0561, that registration of a domain name which is identical to a complainant’s famous mark and trade name is, in and of itself, evidence of bad faith. There may be room for argument in this case over whether some or all of the Complainant’s relevant marks should be regarded as “famous” in the Islamic Republic of Iran, but it seems likely that the Domain Name <telekom.ir>, in particular, would have been recognized by numerous Internet users in Iran as being associated with the Complainant. The registration was not made in the Persian language or script, and the spelling of “telekom” effectively directs browsers’ attention to German telecommunication companies. In those circumstances, it is difficult to believe that the Respondent would have registered that particular Domain Name at all if he did not intend to exploit its value as a trade mark in some way. It is even more difficult to believe that in the absence of any response to the Complaint.
(vi) The registrations of domain names which are identical to widely trade marks of a third party, the fact that they do not appear to have been used for over three and a half years, and the absence of any response, are all suggestive of the kind of opportunistic bad faith which the Panel found proved in Veuve Clicquot Ponsardin, Maison Fondйe en 1772 v. The Polygenix Group Co,
WIPO Case No. D2000-0163 (where the Panel noted that the disputed domain name <veuveclicquot.org> was “so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic 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-com.ir>, <telekom.ir>, <t-mobile.ir>, and <t-online.ir>, be transferred to the Complainant.
Dated: April 17, 2008
Источник информации: https://internet-law.ru/intlaw/udrp/2008/dir2008-0002.html
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