Deutsche Telekom AG v. Microscience Corporation [2004] GENDND 952 (2 July 2004)

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

The Respondent is Microscience Corporation, c/o Daniel Mullen, Charlottetown, Canada.

The disputed domain name <t-isdn.com> is registered with Network Solutions, LLC.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2004. On May 11, 2004, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On May 17, 2004, Network Solutions, LLC transmitted by email to the Center its verification response in which it appeared that the Respondent listed as the registrant in the Complaint had apparently changed address. Network Solutions at the same time provided the actual contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 27, 2004. The Center verified that the Complaint together with the amendment to 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 May 27, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was June 16, 2004. The Respondent did have some e-mail correspondence with the Center and Complainant but did not submit any formal response. Accordingly, the Center notified the Respondent’s default on June 18, 2004.

The Center appointed Knud Wallberg as the sole panelist in this matter on June 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.

The Complainant is the Europe’s largest telecommunications company. 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. The company has more than two million shareholders.

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The Complainant operates under four strategic divisions “T-Mobile”, “T-Online”, “T-Systems” and “T-Com”. T-Com is responsible for the fixed-line network sector using ISDN fixed line connections. The Complainant uses the trademark T-ISDN for these connections. The Complainant is the dominant provider of ISDN services on the German Market, with a market share of over 90%, the trademark T-ISDN is well known and famous in Germany.

The Complainant has registered a large number of national and international trademarks reflecting the term “T-ISDN”. A trademark upon which the Complaint is specifically based is the registered trademark “T-ISDN” with registration no. DE 396 28 751 which is protected in Germany since July 1, 1996. This mark is registered for a range of goods and services in Class 9, 16, 38, 41 and 42. Furthermore, the Complainant is the owner of the German trademarks “T-ISDN” DE 300 08 290, DE300 08 291 and DE 300 08 292 which cover the classes 9, 16, 35, 38, 38 and 42.

Furthermore, the Complainant has registered the designation “T-ISDN” as a Community trademark in the European Union with the registration No. 0043 31 51 for the same products and services as the above-mentioned trademark DE 396 28 751. The Complainant has registered and uses –among others – the following Internet domain names: <t-isdn.de>, <t-isdn.biz> and <t-isdn.info>.

(1) The domain name is identical or confusingly similar to the trademarks and service marks in which the Complainant has rights

The domain name <t-isdn.com> is identical to the Complainant’s trade marks “T-ISDN”.

According to earlier decisions, “the suffix (.com) does not influence on the consideration of similarity” (Deutsche Telekom AG v. Domainsforlife.com, WIPO Case No. D2002-0164).

(2) The Respondent has no rights or legitimate interests in respect of the domain name

The Respondent does not show any legitimate interest in the use of the Internet domain name. In particular, none of the circumstances listed under Paragraph 4 (c) of the Policy, possibly demonstrating rights or legitimate interests, are given. The domain name does not appear to be in use for any bona fide offering of goods or services, and there is no indication that the Respondent was known by the name T-ISDN prior to registration of the domain name.

The Respondent cannot claim that “T-ISDN” is a legitimate abbreviation for one of his businesses. Although using various Internet search engines like “www.google.com” and “www.lycos.com”, the Complainant was not able to identify any references to “T-ISDN” other than references to his own services offered by various resellers.

Moreover, it should be noted that the Respondent is located in Germany so that his knowledge of and reference to the Complainant’s German use of the T-ISDN trademarks is highly likely.

Finally, the Respondent is in no way authorized or licensed to use the Complainant’s marks.

In April 2004, the Complainant learned that on December 3, 2003, the Respondent had registered the domain name <t-isdn.com> and thereby violated the Complainant’s trademarks and service marks described above. A true and correct copy of the Whois record dated May 7, 2004, was enclosed as Annex [A].

At the time the domain name <t-isdn.com> was registered, the registrant was located in Germany (Hamburg). Given the overwhelming market share of “T-ISDN” in the German telecommunication market, it is impossible that the registrant was not aware of the Complainant’s business “T-ISDN” in Germany at the time he registered the domain name <t-isdn.com>.

Before this administrative proceeding under the ICANN Policy was filed, the Complainant’s authorized representative sent a “cease and desist” letter to the Respondent. A true and correct copy of the letter, dated April 30, 2004, was provided as Annex [H].

On the same day the Complainant’s authorized representative received an e-mail from Microscience stating that they refuse to transfer the domain name <t-isdn.com> to the Complainant. A true and correct copy of this e-mail dated April 30, 2004, was provided as Annex [I]. The Respondent proposed to file another complaint with WIPO after it or its associated company Terrabit respectively had already lost a UDRP proceeding against the Complainant regarding the domain name <t-dsl.net> (Deutsche Telekom AG v. Terrabit Working Group, WIPO Case No. D2004-0153).

Although the Respondent as former owner of the domain name <t-dsl.net> as well has already received warning letters from the Complainant in October 2003, and therefore should be aware of the Complainant’s trademark rights in “T-” within the telecommunication businesses, the Respondent registered the domain name <t-isdn.com>.

The domain name <t-isdn.com> was registered in the name of the German office of Microscience Corporation in December 2003. At that time the Complainant’s reputation in the T-ISDN trademark was well established in Germany, so that the registration was made in bad faith.

At least “if the Respondent had done a trade mark research at the time he registered the domain name at issue, the Respondent would have received notice of the registered and used trade marks of the Complainant.” (Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2000-1384).

Another Administrative Panel has already assumed bad faith “when the Respondent is not commonly known by the domain name registered by it” (Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp, WIPO Case No. D2000-0464).

“In the present case the fact that Complainant’s name and trade mark is so well and widely known, coupled with the fact that Respondent’s mailing address is in the same district as Complainant’s business, makes inevitable that Respondent registered the domain names in full knowledge of Complainant’s rights and interest. Certainly there could be no doubt as to Respondent’s knowledge at the time of registration of the second domain name” (Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574).

As stated in the Policy Paragraph 4 (b) (ii), evidence for the registration and use of the domain name in bad faith shall be given, if the domain name was registered in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name. Regarding the well known reputation of the Complainant’s trademark “T-ISDN” at least in Germany, where the Respondent is located, it is highly likely that the Respondent registered the domain name with the intent to benefit from the reputation of the famous trademarks contained in its domain name.

There has been no legitimate use of the domain name by the Respondent. According to a previous administrative panel decision of the WIPO Arbitration and Mediation Center, there is no need to determine which of the examples listed in paragraph 4 (b) of the Policy is applicable in this case:

“Since the hypotheses identified in paragraph 4 (b) are not limitative, it is possible to say that Respondent’s inactivity or passive holding of the domain name, may prove that the domain name has been registered and is being used in bad faith.” (Atlantic Recording Corporation v. Paelle International, WIPO Case No. D2001-0065).

Furthermore, the President of Microscience Corporation, Mr. Daniel Mullen is already known by the WIPO Arbitration and Mediation Center since several WIPO administrative panel decisions were rendered against him, namely

- Norisbank Aktiengesellschaft v. MSN, WIPO Case No. D2000-1307, with the Respondent’s administrative contact being Daniel Mullen, P.O. Box 1900, Charlottetown, Canada;

- America Online Inc. v. Daniel Mullen dba MSN and MSN Networks, WIPO Case No. D2000-1605;- Microsoft Corporation v. “MSNetworks” or “Microscience Corporation, WIPO Case No. D2002-0647 both represented by Daniel Mullen;

- Deutsche Telekom AG v. Terrabit, Working Group, WIPO Case No. D2004-0153, represented by Daniel Mullen, as former owner of the domain name <t-dsl.net>.

In Vector Aerospace Corporation v. Daniel Mullen, WIPO Case No. D2002-0878 the following is stated: “Further, the Panel considers the Respondent’s pattern of registering other domain names, which are identical or confusingly similar to famous and/or well-known marks. The Respondent registered other domain names of well-known marks such as “Norisbank” and “AOL”. In this respect he has been engaged in the last two years in WIPO arbitration cases (American Online Inc. v. Daniel Mullen dba MSN and MSN Networks, WIPO Case No. D2000-1605; Norisbank AG v. MSN, WIPO Case No. D2000-1307). In both cases the Respondent had to transfer the domain names in question”

This indicates that also the domain name <t-isdn.com> has been registered and is being used in bad faith according to the Policy.

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

In accordance with Paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements are satisfied:

(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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

Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences there from, as it considers appropriate.

The evidence presented by the Complainant demonstrates without doubt that the Complainant has acquired trademark rights in the name T-ISDN in Germany and in the European Union.

The domain name <t-isdn.com> is identical to the Complainant’s mark, and consequently the requirement of Paragraph 4(a)(i) is met.

The Complainant alleges that the Respondent has no rights or legitimate interest in the domain name. The Respondent has not rebutted this allegation and based on the records of this case, it is unlikely that any such rights or interest may exist.

Due to the reputation of the Complainant and Complainant’s marks in the country where the registrant (Respondent) was located at the time of registration, the Panel finds that the registration of the contested domain name was done in bad faith.

The Panel further finds that it has been established that Respondent is engaged in a pattern of registering domain names containing trade marks of other companies.

The domain name has apparently not been used actively. As it has been stated in several other decisions under the UDRP, inactivity or passive holding can in specific cases be regarded as “use” within the meaning of Paragraph 4(a)(iii), which the Panel finds to be the case here.

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-isdn.com> be transferred to the Complainant.

Generic Top Level Domain Name (gTLD) Decisions

Deutsche Telekom AG v. Microscience Corporation [2004] GENDND 952 (2 July 2004)

World Intellectual Property Organization