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Deutsche Telekom AG v. Biz Pages Ltd [2004] GENDND 783 (8 June 2004)

1. The Parties

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

The Respondent is Biz Pages Ltd, Larnaca, Cyprus, represented by Mr. S. Hartog, Netherlands.

2. The Domain Name and Registrar

The disputed domain name <11833.net> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2004. On February 27, 2004, the Center transmitted by email to Network Solutions, Inc. Registrar a request for registrar verification in connection with the domain name at issue. On March 1, 2004, Network Solutions, LLC. Registrar 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 3, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was March 23, 2004. The Response was filed with the Center on March 23, 2004.

The Center appointed Anders Janson as the sole panelist in this matter on May 25, 2004. 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 Complainant asserted, and provided evidence in support of, the following facts, which the Panel finds established:

The Complainant, Deutche Telekom AG, is Europe’s largest telecommunications company, with a vast variety of services. The Complainant is part of an international group, Deutche Telekom Group, with a variety of strategic shareholdings, in central and eastern Europe. The Complainant has established presence in more than 65 countries in the world through regional units.

The Complainant is a fixed-network operator in Europe, operating approximately 57.5 million lines, including integrated services digital network channels, and has in the region of 140.000 employees worldwide.

The Complainant holds the trademark “11833” as a registered trademark in Germany, registration number DE30007682, with a priority date of February 3, 2000. The trademark is registered for the following goods and services:

This word mark “11833” is registered for the following goods and services:

- CL09: Electric, electronical, optical, measuring, signaling, controlling or teaching apparatus and instruments (as far as included in class 9); apparatus for recording, transmission, processing and reproduction of sound, images or data; machine run data carriers; automatic vending machines and mechanism for coin operated apparatus; data processing equipment and computers.

- CL16: Printed matter; especially printed and/or cards made from carton or plastic; instruction and teaching material (except apparatus); stationery (except furniture).

- CL 35: Advertising; business management.

- CL36: Insurance; Financial services; monetary services; real estate services.

- CL38: Telecommunication services; rental of equipment for telecommunication, especially regarding radio and television.

- CL39: Transport; storage of goods.

- CL42: Computer programming services; data base services especially rental of access time to and operation of a data base as well as collecting and supplying of data, news and information; rental services relating to data processing equipment and computers; projecting and planning services relating to equipment for telecommunication.

The Complainant uses the trademark “11833” to provide an extensive telephone information system. People calling the telephone number 11833 can ask for information about telephone numbers, fax numbers, mobile phone numbers, addresses or postal codes. Information is provided in German, English and Turkish.

The Complainant is the registrant of a number of domain names containing the trademark “11833”, such as <118.33.com>, <11833.info> and <11833.org>. Only due to the fact that a “.de” domain name has to contain at least one letter, the complainant could not register the domain <11833.de>.

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 mark.

The Respondent has asserted, and presented evidence in support of, the following facts, which the Panel finds established.

The Respondent is a Yellow Pages Company, which provides information on all active companies in Europe.

The Respondent contends that 118 is a common number, used for directories, and that the CEPT (European Conference of Postal and Telecommunications Administration) and ECTRA (European Committee for Telecommunications Regulatory Affairs) has recommended that the 118-number should be allocated to such directories.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the domain name <11833.net> is identical to the “11833” trademark.

The Complainant further claims that the Respondent does not show any legitimate interest in the use of the Internet domain name. Although the Respondent registered the domain name as early as August 26, 2002, the Respondent does not use the disputed domain name for a bona fide offering of goods and services, and is not making a legitimate noncommercial or fair use of it. The domain name <11833.net> links to a webpage from Network Solutions, reading “This site is under construction and coming soon”.

The Complainant finally claims that the domain name has been registered and used in bad faith. There has been no legitimate use of the domain name by the Respondent. The Complainant learned in June 2003 of the registration made by the Respondent. The Complainant then offered to purchase the domain name from the Respondent for a purchase price of USD 500. On July 2, 2003, the Respondent replied asking for a purchase price of USD 5.000. The Complainant then offered a purchase price of USD 2.500. On October 1, 2003, the Respondent asked for USD 50.000. The Respondent further offered the Complainant to purchase another domain name, <gelbeseiten.com>. “Gelbe Seiten” is the German term or the Yellow Pages, and is the designation for a directory of telephone numbers and addresses listed by companies in Germany. The services are provided by Deutche Telekom Medien GmbH, a company wholly owned by the Complainant. Deutche Telekom Medien GmbH is the holder of more than 100 trademark registrations which includes “Gelbe Seiten”, and further more owns domain names which includes “Gelbe Seiten, such as, inter alia, <gelbe-seiten.de>.

The Complainant contends that the disputed domain name was registered with the fame and reputation of the Complainant’s mark “11833” in mind. There is no explanation why out of all possible combinations of letters and numbers that are available for domain names, the Respondent would have registered this combination of numbers without consideration of the telephone information system used by the Complainant. The reservation of the disputed domain name however prevents the Complainant from registering the disputed domain name.

The Respondent is a competitor of the Complainant. On its website “www.bizpages.com.cy”, the Respondent claims to be “one of the fastest growing Yellow Pages Company in Europe”, and states on its website that it provides its services in among other places in Germany. The Complainant alleges that the Respondent must know of the “11833-service” in Germany.

In the Deutsche Telekom AG v. Ronan Bairead, [Ronan Barrett], WIPO Case No. D2003-0893 the domain name <11833.com> was transferred to the Complainant from the registrant. The Panel found that the registrant of the disputed domain name in the case did not have a legitimate interest in the disputed domain name. The registrant was a private person.

The Complainant finally contends that, for the abovementioned reasons, the domain name <11833.net > should be transferred to the Complainant.

B. Respondent

The Respondent asserts that the disputed domain name was registered by the Respondent on August 26, 2002. The Respondent contends that the Complainant has added two numbers, 33, to the 118-number recommended by CEPT/ECTRA. There are other companies, which uses the number 11833, such as eTel in Austria. There are other companies which uses 118118, such as Eniro in Sweden.

The Respondent registered the disputed domain name because of the familiarity of the 118-number, and the gTLD “.net” is suitable for companies which deliver its services all over the world.

The Respondent has not yet put the disputed domain name into use, because the preparations of that site takes some time. The Respondent claims that the wording displayed on the Respondents website “www.bizpages.com.cy” that the Respondent’s activities will be extended in 2004, is proof thereof.

The Respondent asserts that the Complainant does not provide it’s services in Cyprus, and that the trademark “11833” is only registered in Germany. The Respondent further contends that the Respondent has not provided evidence of that the trademark is used in Germany, and that it is very well known in Germany. The Respondent further contends that, notwithstanding if it is famous in Germany, the trademark “11833” is not well known outside of Germany. The Respondent claims that the domain name <11833.de> is not registered by the Complainant. The domain name <11833.com> is linked from the website at “www.t-info.de”, which belongs to the Complainant. The Respondent asserts this proves that the Complainant makes no use of the term 11833 on the Internet.

The Respondent asserts that in the WIPO Case referred to by the Complainant, Deutsche Telekom AG v. Ronan Bairead, [Ronan Barrett], WIPO Case No. D2003-0893, the Respondent did not submit a response, which was the reason for the outcome in the case.

The Respondent claims, that even though the Complainant on February 3, 2000, has registered the trademark “11833” it is registered as a word mark. The trademark office in Germany does not verify in advance if the trademark in an application is suitable to be held as a trademark. The Respondent asserts that the numbers “11833” is not a word, only digits, and as such not suitable for a trademark registration as a word mark and therefore is not protected. The compilation of digits does not have any intellectual content, and should therefore not be protected. Further more, the number “118” is an internationally used number for the services provided by the Complainant and the Respondent. These numbers is not the Complainant’s invention, as it only added “33”.

The Respondent claims that if the trademark “11833” is to be considered a protected word mark, the protection should be limited, and not prevent the Respondent from using the disputed domain name. Further more, the Complainant has not proven the trademark is in use, nor that it is well known in Germany or elsewhere. The Complainant does not make any explicit use of the trademark “11833” on the Internet.

The Respondent further claims that the gTLD “.net” is used internationally. The Complainant have no use for the “.net” gTLD, but the likely use in their operations is to use the ccTLD “.de” instead. The fact that the <11833.de> is not possible to register, due to the requirement of a letter among digits in a domain name, proves that the “11833” is not a suitable trademark. The numbers can be used in different circumstances. It is, inter alia, a postal code for an area in Arizona, USA, and a date (11-8-33). When searching for “11833” on google.com, you get more than 60.000 hits.

The Respondent also claims that the Respondent does not intent to offer goods and services for – as the Panel understands it - which the trademark “11833” is registered. The Respondent intends to use the disputed domain name for their global activities concerning the Yellow Pages to provide information about all active companies in Europe. Thus, there is no risk of confusion. The trademark “11833” is registered for the distribution of telephone directories.

The Respondent further asserts that the Respondent intends to make fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark “11833”. Since “11833” is only known in Germany, consumers from other countries will not be mislead. If the number “11833” is used for other activities than a phone number, German consumers will not be mislead. The Respondent is willing to not include German information under the disputed domain name, to further avoid confusion.

The Respondent did not intend to damage the Complainant in any way. The digits used are used for a different purpose than they are by the Complainant. The Respondent used “118” because of the digits status as a number used for directories, and added “33” because it sounded good to the Respondent.

The Respondent further contends that the Complainant instigated the question of purchasing the domain name. Prior to the inquiry from the Complainant, the Respondent had no intention of selling the disputed domain name. The Complainant did not submit it had any rights to the disputed domain name in the e-mails sent from the Complainant, which proves that the Complainant acknowledges that it has no right to the disputed domain name. The Respondent asserts that it is understandable that they considered the offer, as every domain name has it’s price.

Finally the Respondent contends that even though the Complainant registered the trademark in 2000, the complainant has not tried to register the disputed domain name during this period.

The Respondent therefore asserts, that for the abovementioned reasons, the Complaint should be rejected.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

In accordance with paragraph 4(a) of the Policy, the complaint must prove that:

(i) the domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Respondent has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain names in question; and

(iii) the domain names have been registered and are being used in bad faith

A. Identical or Confusingly Similar

The Complainant has proven that it is the holder of the registered trademark “11833” in Germany, for inter alia classes 38 (Telecommunication services; rental of equipment for telecommunication, especially regarding radio and television) and 42 (Computer programming services; data base services especially rental of access time to and operation of a data base as well as collecting and supplying of data, news and information; rental services relating to data processing equipment and computers; projecting and planning services relating to equipment for telecommunication).

Previous Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. The burden of refuting this presumption lies with the Respondent (see EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc, WIPO Case No. D2000-0047).

The Respondent has not contested the similarity between the disputed domain name and the trademark “11833”, but has asserted that the trademark is not entitled to wide protection due to the fact that is consists merely of digits. The Respondent has contested that the German registration office registers trademarks without verifying if it is suitable, which weakens the trademark even further.

Considering that these proceedings are summary, the Panel has not investigated the process of registering trademarks in Germany. Since the Complainant has not provided any evidence in support of the use of the trademark, or whether it is well known in Germany or elsewhere, it is unknown to the Panel whether the trademark, however undistinguishable, is famous and as such have a strong protection. However, a registration of a trademark does mean that there is a presumption of right to the trademark for the holder of the registered trademark. However weak the trademark in question may seem, it is registered and is protected as such in these proceedings.

The Respondent has further asserted that the trademark “11833” is only in use in Germany, which further weakens the trademark. Whether a disputed domain name is identical or confusingly similar should however be decided without reference to if the trademark is operative in the country of residence of the registrant of the disputed domain name (Funskool (India) Ltd v. funschool.com Corporation, WIPO Case No. D2000-0796).

For these reasons, the Panel concludes that Complainant has rights in the trademark “11833”, and that the trademark is identical to the disputed domain name.

B. Rights or Legitimate Interests

The Complainant has alleged that the Respondent is not affiliated, or in any other way has a relationship with, the Complainant, nor that the Respondent has any authorization to use the registered trademark. The Complainant thus asserts that the Respondent does not have any right or a legitimate interest in the domain name.

The burden of proof thereby shifts to the Respondent, which then must provide evidence in support of its right or legitimate interest in the disputed domain name.

Paragraph 4(c) of the Policy gives non-exhaustive examples of the facts, which may prove the Respondent’s rights for these purposes.

(i) before any notice to the Respondent of the dispute, the use 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

(ii) the Respondent have been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights.; or

(iii) the Respondent are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue

The Panel finds it established that the Respondent has not provided evidence in support of any use or preparations to use the domain name in connection with a bona fide offering of goods and services (4c(i) of the Policy). The Respondent registered the domain name almost 24 months ago, and it is undisputed that the domain name is not in use as of now. The Panel does not find that the allegation that the Respondent is in the process of preparing to use the disputed domain name is proven by the general remark on the Respondent’s web-page “www.bizpages.com.cy” about the expansion of the business operations throughout the world during 2004. The Panel therefore also finds it established that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark “11833” (4(c)(iii) of the Policy). The Respondent has given no evidence in support of its claims of the Respondent’s intentions with disputed domain name. The telephone number “118” is, as the Respondent has pointed out, to be reserved for telephone directory services, which are the kinds of services the Respondent claims to plan. The Respondent has however not explained why a service of that kind, on the Internet, which the Respondent claims to plan, shall have these specific digits, which corresponds to the Complainant’s trademark. The Complainant owns the domain name <11833.com>, which is linked to the Complainant’s website www.t-online.de where similar services are provided. If such services were provided through the disputed domain name, it is likely to mislead the Complainant’s customers, as well as customers in other countries since “118” in different constellations is used throughout the world for precisely these services.

The Respondent has not claimed to be commonly known by the disputed domain name (4(c)(ii) of the Policy).

The Respondent has not contended to have rights or legitimate interest in the disputed domain name on any other ground.

The Complainant has therefore succeeded in establishing the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

For the purposes of establishing whether paragraph 4(a)(iii) of the Policy is applicable, the Panel must establish whether the domain name has been registered and is being used in bad faith.

For the purposes of paragraph 4(a)(iii), it is stated in Paragraph 4(b) of the Policy, that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

(i) circumstances indicating that the Respondent has registered or has 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of its 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 trademark 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 its 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 its website.

Regarding item (i) above, the Panel finds that the Complainant offered the Respondent USD 500 for the transfer of the domain name in to purchase the disputed domain name through an e-mail dated June 30, 2003. The response from the Respondent read as follows: “… We already have a price for the domain name 11833.net. It’s 5000 USD. If you are interested just send us an e-mail.” The Complainant answered on October 1, 2003, as follows “…Our client is now willing to offer US $2500 for the domain name….”. The Respondent answered the same day, stating “…I think we made a misstake last time we communicated. Our price is 50 000 USD and NOT 5000 USD…”. On December 16, 2003, the Respondent sent an e-mail with reference to the disputed domain name and the previous e-mail conversation in regard of this. In the e-mail the Respondent made an offer to sell another domain name to the Complainant: “Are you interested in buying an other very good domain. My suggestion is that you represent Deutche Telecom AG. www.gelbeseiten.com Please send me an e-mail if you find this offering intresting….”

The Complainant has asserted and provided evidence in support of the fact that a fully owned daughter company owns more than 100 trademark registrations as regard “Gelbe Seiten”.

While it may be true that the Respondent’s offer was triggered by the Complainant’s actions, the Panel is convinced that the Respondent acquired the domain name primarily for the purpose of selling it to the Complainant, and that an offer or solicitation was inevitable. This conclusion is supported by the fact that the Respondent says in its first e-mail that the Respondent already had a price for the domain name, and by the sums proposed, which were an great excess of out-of pockets-costs. Further more, the Respondent have not used the domain name for a legitimate non-commercial use during the time under which it has had the registration, and also offered – non-solicited- to sell another domain name to the Complainant, which shows a pattern of conduct.

Considering all of the above, the Panel therefore finds it established that the Respondent has registered and used the disputed domain names in bad faith.

The Complainant has therefore succeeded in establishing the third element in paragraph 4(a) of the policy.

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, <11833.net> be transferred to the Complainant.

Anders Janson
Sole Panelist

Date: June 8, 2004