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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Deutsche Telekom AG v. Comdot Internet Service Private Limited

Case No. D2009-0059

1. The Parties

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

The Respondent is Comdot Internet Service Private Limited, Mumbai, India.

2. The Domain Name and Registrar

The disputed domain name <tmobilepuertorico.com> is registered with Lead Networks Domains Pvt. Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 16, 2009. On January 19, 2009, the Center transmitted by email to Lead Networks Domains Pvt. Ltd. a request for registrar verification in connection with the disputed domain name. On January 21, 2009, Lead Networks Domains Pvt. Ltd. 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" or "UDRP"), 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 28, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 17, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent`s default on February 20, 2009.

The Center appointed Antonio Millé as the sole panelist in this matter on February 24, 2009. 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 trademarks upon which the Complaint is based are a variety of trademarks including the term "T-Mobile".

The Complainant stated that these trademarks are registered in different classes and territories, attaching copies proving two registrations in India, country of the Respondent domicile:

- No 1247181 dated November 3, 2003; and

- No 1327567, dated December 22, 2004,

and listing more than fifty registrations in other countries across the world dated from 1997 to 2007, that is, each predating the disputed domain name registration in September 30, 2008.

The Complainant invokes their condition of being "Europe`s largest telecommunications company" and makes reference of the situation of their subsidiary T-Mobile International AG & Co. KG being "one of the largest GSM mobile communications providers in the world". And that the name T-Mobile is "universally recognized and relied upon as identifying the Complainant".

No factual information about the Respondent is available other than those appearing in the registration WhoIs details for the disputed domain name.

5. Parties` Contentions

A. Complainant

As mentioned in the "Factual Background" section, the Complainant bases its Complaint on the registration of a large number of national, European Community and international trademarks reflecting the term "T-Mobile". It refers also to its registration of the domain names incorporating the terms "t-mobile" in the gTDLds ".com", ".net" and ".org".

The Complainant considers that "the disputed domain name is confusingly similar to the trademarks "T-Mobile" because contains the trademark textual expression, being insignificant to the UDRP ends the addition of the term "puertorico" and the use of lower case letter for the initial "T". These differences to its trademark in the disputed domain name "cannot exclude the likelihood of confusion with the Complainant`s trademarks".

On reference to the addition of the word "puertorico" the Complainant considers that "In view of the fact that the Complainant is doing business in Puerto Rico, it rather increases the likelihood of confusion as internet users, when visiting tmobilepuertorico.com, will assume that they are visiting the official Puerto Rican website of the Complainant".

The Complainant states that the Respondent has no rights or legitimate interests in respect of the domain name, because a) at the present it "does not use the disputed domain name to operate a website"; b) "none of the circumstances listed under para. 4(c) of the Policy, which demonstrate rights or legitimate interests, are given"; and c) "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 T-MOBILE MARKS".

The Complainant maintains that the domain name has been registered in bad faith, because a) "the Complainant`s trademarks had already been registered for several years by the time of the registration of the domain name on September 30, 2008"; b) "the Complainant`s trademark "T-Mobile" is widely known, as evidenced by its substantial use and reputation throughout the world"; c) "the domain name was registered using the Private Registration service which allows the true domain name owners not to disclose their actual contact details in the WhoIs record"; d) "[t]he Respondent has already earlier been involved in domain name disputes (see WIPO Case No. D2008-1212 and WIPO Case No. D2008-1178). In both cases, the Respondent also used a privacy service when registering the domain names, and in both cases it was found that the Respondent had registered the disputed domain names in bad faith".

The Complainant claims also that the contended domain name is being "passively" used in bad faith by the Respondent, because "presently, there is no active use of the disputed domain name".

B. Respondent

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

6. Discussion and Findings

The Policy sets out in paragraph 4(a) the cumulative elements that shall be proved by the Complainant in order to succeed in an administrative proceeding for abusive domain name registration. The Panel will examine each one of these elements in the following points:

A. Identical or Confusingly Similar

The disputed domain name ("Domain Name") comprises two elements:

(a) the expression "tmobile", which is the Complainant`s registered trademark; and

(b) the word "puertorico", a term that – disregarding the lack of a space between the two words – refers to Puerto Rico, Unincorporated Territory of the United States of America.

The Panel finds that the suppression of the dash that separates the initial "T" in the T-MOBILE trademark is inconsequential and that the addition of a term that refers to a territorial jurisdiction would induce Internet users confusion and further add to the Domain Name <tmobilepuertorico.com> being confusingly similar with the Complainant`s T-MOBILE trademarks. Similar cases have been recognized by previous UDRP decisions, such as the following:

"The Panel is of the view that ATT is a trade mark of the Complainant and that the first three letters of each of the domain names in dispute is identical to that mark. The balance of the characters in the domain names in dispute are geographical descriptors. In the Panel`s view, where a domain name is composed of a trade mark juxtaposed with a place name, a reader will naturally split them in that way, and the absence of a space, or the insertion of a dash, underscore, or hyphen does not prevent that approach. Accordingly, the Panel is of the view that each of the domain names in dispute comprises a portion identical to a mark (ATT) in which the Complainant has rights, together with a portion comprising a geographic qualifier, which is insufficient to prevent the composite domain name from being confusingly similar to Complainant`s mark ATT or Complainant`s Marks."

AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553.

"Specifically, first, the insertion of a hyphen between two portions of a domain name, such as "pepsico" and "afghanistan" to form <pepsico-afghanistant.com> as contrasted with a non-hyphenated version <pepsicoafghanistan.com> is so de minimus a variation as to have absolutely no effect on ameliorating user confusion. If one form of any such domain name is sufficiently similar to a mark, then the other form is just as similar as well. Accordingly, the Panel will ignore all such hyphens in its analysis.[…] Further, in the Panel`s view, forming a domain name, such as the disputed domain name here, by appending a country name (here Afghanistan) to a complainant`s mark (here being "PEPSICO") is completely insufficient to dispel user confusion from inevitably occurring. In fact, doing so very likely exacerbates rather than ameliorates the confusion. The simple reason is that, given well-known and widely followed naming conventions in forming domain names, Internet users in a given country or who have an interest in that country and desire to reach a website of a corporation or other entity operating in that country would likely think to construct a domain name by simply appending the name of the country to the name or mark associated with that corporation or entity followed by the general commercial gTLD ".com." PepsiCo, Inc. v. QWO, WIPO Case No. D2004-0865, where profuse UDRP precedent on the matter was also quoted.

The Panel finds that the Domain Name, which fully incorporated the Complainant`s trademarks and merely adds a geographical term, is confusingly similar to the Complainant`s trademark. Therefore, the requirements of paragraph 4(a)(i) of the Policy are met.

B. Rights or Legitimate Interests

"Tmobile", "puertorico", and "Puerto Rico" do not correspond to the corporate name of the registrant of the Domain Name. The Respondent has not answered the Complaint and therefore, it has not given any basis for a right or legitimate interest in respect of the use of the expression "tmobile" in a domain name. The Panel`s conclusion about the lack of Respondent`s rights or legitimate interests based on the record before it is confirmed by the lack of a Response from the Respondent regarding the existence of any of the circumstances listed in paragraph (4)(c) of the Policy, to demonstrate his rights or legitimate interests in respect of the Domain Name.

The fact seemingly invoked by the Complainant and verified by the Panel that no active website exists at "www.tmobilepuertorico.com", in the present circumstances, further corroborates a finding of Respondent`s lack of rights and legitimate interests therein.

On this basis, the Panel concludes that the Respondent has no rights and legitimate interests in the Domain Name. Therefore, the requirements of paragraph 4(a)(ii) of the Policy are met.

C. Registered and Used in Bad Faith

The Complainant based the Complaint under the third element of the Policy on the existence of the circumstances set out in paragraphs 4(b)(iv) of the Policy regarding the registration and use of the Domain Name in bad faith.

The registration as the Domain Name of the trademark of a widely known telecommunications company in combination with a geographical term, seems to the Panel to be a typical expression of the conduct of those that have "intentionally attempted to attract, for commercial gain, Internet users to a web site 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 this web site or location or of a product or service on such web site or location" (Policy, paragraph (4)(b)(iv)).

At the Domain Name registration time (end of September 2008) the Complainant trademarks had about ten years of use and acquired sufficient goodwill as to discard as implausible any claim of innocent and accidental the Respondent`s registration by the Respondent.

In light of these circumstances, and considering the Respondent`s silence about any legitimate reason that could drive the Respondent to register and use "tmobilepuertorico" as the Domain Name, the Panel can not find any justification for such registration of the Domain Name other than to unjustifiably trade off the goodwill of and evoke the Complainant`s trademark.

An additional reason to find bad faith at the domain name registration time, in the present circumstances, is the Respondent`s use of a proxy or privacy service. As was repeatedly recognized in previous UDRP decisions, the preservation of private personal or commercial contact information is not per se objectionable, but the concealment of the Respondent`s identity in a case were the good will of the Respondent is lacking can reinforce the finding of bad faith.

The use of a proxy registration service to avoid disclosing the name and coordinates of the real party in interest is also consistent with an inference of bad faith in registering and using the Domain Name, given the other evidence in this case of evasive and irresponsible conduct. Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696.

Indeed, the use of a proxy service would more usually (although not necessarily always) be indicative that the respondent is seeking to hide its activity from scrutiny in proceedings under the Policy. The natural inference from this is a negative one that the Respondent has "something to hide". Taking into account the circumstances of this case, the Panel draws such a negative inference from the Respondent`s use of Eurobox Ltd as a proxy service. The Saul Zaentz Company d/b/a Tolkein Enterprises v. Eurobox Ltd. /"The Saul Zaentz Company", WIPO Case No. D2008-0156.

The Panel agrees with the Complainant that the passive holding of Domain Name, in the present circumstances, is further evidence of bad faith use of the Domain Name. Repeated UDRP panels have considered that the passive use of a domain name could constitute in certain circumstances a manifestation of bad faith, as follows:

"To the extent that Respondent may contend that bad faith use cannot be shown because it does not yet have an active Pepperdine website and is therefore not actually using a site to divert traffic to itself, the Panel looks to those cases in which the passive holding of a domain name has been held to evidence bad faith use of the name where other factors exist. Sybase, Inc. v. Analytical Systems, WIPO Case No. D2004-0360; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; DCI S.A. v. Link Commercial Corporation, WIPO Case No. D2000-1232; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090. In the Panel`s view, such factors exist here. Complainant`s marks are well known and incorporated into the Domain Names in their entirety with no effort on Respondent`s part to distinguish the Domain Names from Complainant`s marks, as it might easily have done." Pepperdine University v. BDC Partners, Inc., WIPO Case No. D2006-1003.

"[UDRP] decisions have held that lack of activity in respect of domain names in dispute may constitute a form of registration and use in bad faith effected through omission" ( WIPO Case No. D2000-0464, WIPO Case No. D2000-0003, WIPO Case No. D2000-0239 or WIPO Case No. D2000-1402)." See Fadesa Inmobiliaria, S.A. v. Flemming Madsen, WIPO Case No. D2001-0570.

As the Complainant alleges, "The Respondent has already earlier been involved in domain name disputes (see WIPO Case No. D2007-1637, WIPO Case No. D2007-1723, WIPO Case No. D2007-1788, WIPO Case No. D2008-0025, WIPO Case No. D2008-0213, WIPO Case No. D2008-0477 and WIPO Case No. D2008-1284)". The revision of these cases allowed the Panel to verify that the Respondent put on display a clear pattern of conduct, attacking in the same way and with the same scheme widely or well-known trademarks that the Respondent registered by means of a proxy service. This circumstance is evaluated by the Panel as evidence both of bad faith at the registration time and during the posterior passive use of the Domain Name.

"Respondent has been found by previous panels under the Policy to have engaged in a pattern of registering domain names to prevent the owners of marks from registering them. See, Celine Dion and Kevin Spacey, supra. Respondent`s similar course of conduct here with respect to Complainant`s trademark and service mark justifies an adverse finding under the terms of paragraph 4(b)(ii) of the Policy." Tom Cruise v. Network Operations Center /Alberta Hot Rods, WIPO Case No. D2006-0560.

As such, the Panel finds that paragraph 4(a)(iii) of the Policy is proved, but may also justify its finding in the satisfaction of one of the other examples of a bad faith registration, namely that contained in paragraph 4(b)(ii) of the Policy ("you have 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 you have engaged in a pattern of such conduct"). With some 40 UDRP decisions against it, it is clear that the Respondent has engaged in a pattern of abusive domain name registration, which greatly reinforces the finding, so this alone would be sufficient for a finding of bad faith in the present case. AT&T Corp. v. Asia Ventures, Inc., WIPO Case No. D2005-1012.

Because of this, the Panel concludes that the Respondent has registered and used the <tmobilepuertorico.com>Domain Name in bad faith. Therefore, the requirements of paragraph 4(a)(iii) of the Policy are met.

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 <tmobilepuertorico.com> be transferred to the Complainant.

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Antonio Millé
Sole Panelist

Dated: March 2, 2009