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Deutsche Telekom AG v. Steven Newman [2005] GENDND 1622 (14 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Deutsche Telekom AG v. Steven Newman

Case No. D2005-0707

1. The Parties

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

The Respondent is Steven Newman, Texas, United States of America.

2. The Domain Names and Registrar

The disputed Domain Names <tmobilesidekickii.com> and <tmobilesidekick2.com> are registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 5, 2005. On July 6, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On July 6, 2005, Go Daddy Software 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 July 14, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 3, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 8, 2005.

The Center appointed Petter Rindforth as the sole panelist in this matter on August 16, 2005. 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 Respondent has sent several e-mail’s to the Center, the first one on July 15, 2005, and the last one on August 13, 2005, expressing his willingness to file a Response and asking for instructions. The Center has repeatedly informed the Respondent on how to proceed with a Response, the time limits and even on the possibility to file a late Response. However, no formal or informal Response has been filed at any time during the proceedings.

The Administrative Panel shall issue its Decision based on the Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. The case before the Panel was conducted in the English language.

4. Factual Background

The Complainant is Europe’s largest telecommunications company, covering the entire spectrum of modern telecommunications. The Complainant is continuously driving ahead the internationalization of the Deutsche Telekom Group with a variety of strategic shareholdings. Over the past two years the Complainant has completed or initiated transactions amounting to 66 billion dollars. 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 with a focus on the most dynamic markets in Europe and the United States (further facts shown in Annex C of the Complaint).

The Complainant’s subsidiary T-Mobile International is one of the largest GSM mobile communications providers in the world. T-Mobile USA is one of the fastest growing wireless service providers in the USA, offering all digital voice, messaging and high-speed wireless data services to more than 17.3 million customers. “T-Mobile” is the corporate name under which the Complainant’s business in the mobile communications sector is conducted (further facts on T-Mobile shown in Annex D of the Complaint).

The “T-Mobile Sidekick II” (launched in April 2004) is the successor to the “T-Mobile Sidekick” which was launched in October 2002. The “T-Mobile Sidekick” is an all in one device mobilephone that lets users surf the web, send and receive e-mails, chat, play games, take and e-mail mobile snapshots.

The Complainant has registered a number of domain names consisting of “tmobilesidekick” or variations thereof. A list of these domain name registrations is provided as Annex G of the Complaint.

The Complainant has registered trademarks reflecting the term “T-Mobile Sidekick”, namely, US trademark No. 2951346, Community Trademark EM03133601 and International Registration IR00813005. A printout of the corresponding database entries is provided as Annex H of the Complaint. The Complainant is also the owner of a number of trademark registrations reflecting the term “T-Mobile”. A list of these registrations is provided as Annex I of the Complaint.

The Respondent registered the Domain Names on October 3, 2004 (Annex A of the Complaint), however no specific information is provided about the Respondent’s business activities.

5. Parties’ Contentions

A. Complainant

The Complainant states that since the launch of the “T-Mobile Sidekick II” in April 2004, and due to several marketing campaigns addressing especially young people, it has become a pop culture icon as a “must have” for athletes, celebrities and musicians. Printouts of press releases are provided as Annex E of the Complaint. The “T-Mobile Sidekick II” has afforded a great reputation. By consequence, upon entering “T-Mobile Sidekick II” or “Sidekick II” into the search engine Google, all results relate to the Complainant (Annex F of the Complaint).

The name “T-Mobile” is universally recognized and relied upon as identifying the Complainant. The disputed Domain Names are therefore confusingly similar to the Complainant’s trademarks T-MOBILE SIDEKICK and T-MOBILE. Complainant refers to a number of prior UDRP-decisions in support for this statement, such as Chernow Communications, Inc. v. Jonathan D. Kimball, WIPO Case No. D2000-0119, “The use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark”, and Nokia Corporation. Horoshiy, Inc. v. LaPorte Holdings, WIPO Case No. D2004-0851, “Adding a common or a generic term to a well-known mark does not sufficiently distinguish the domain name from Complainant’s trademark. This view has expressed repeatedly by other panels […].”

The Complainant further states that 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 marks.

The Respondent does not use the Domain Names for a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use of them. There is no indication that the Respondent was known by the name “T-Mobile Sidekick” prior to the registration of the Domain Names.

In April 2005, the Complainant learned that the Respondent had registered the disputed Domain Names, and thereby interfered with the Complainant’s trademarks and service marks described above. On April 21, 2005, the Complainant’s representatives sent a cease and desist letter to the Respondent via email and mail and asked him to transfer the Domain Names to the Complainant (Annex K of the Complaint). Since the Respondent did not respond, they sent reminders on May 12 and 25, 2005, but did not get any response.

The Complainant argues that the disputed Domain Names are registered and used in bad faith. When registering the Domain Names the Respondent had knowledge of the Complainant’s trademarks and business names. This is evident given the worldwide reputation of the Complainant’s trademarks. It is highly unlikely that the Respondent would have registered the Domain Names without having knowledge of the Complaint’s product “T-Mobile Sidekick”.

The Respondent has registered the Domain Names with the intent to benefit from the reputation of the famous trademarks and the business name contained in its Domain Names by using them himself.

The disputed Domain Names are active and point towards a portal website which simply lists various sponsored links. It is now a well-known practice to display on a web page or search engine various links to other commercial websites: every link activated by an Internet user enables the owner of this page to collect a financial remuneration proportional to the number of connections.

Previous panels held that it was an evidence of bad faith if “the Respondent is using the disputed domain name to direct visitors to a search engine that provides sponsored links”, Lowen Corporation d/b/a Lowen Sign Company v. Henry Chan, WIPO Case No. D2004-0430.

The Complainant requests, in accordance with paragraph 4(i) of the Policy, that the Panel issue a decision that the Domain Names be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) that the Respondent’s Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has several trademark registrations for T-Mobile and T-Mobile Sidekick, such as

US Registration No 2951346 “T-MOBILE SIDEKICK”

US Registration No 2284387 “T MOBILE”

International Registration No IR00813005 “T-Mobile SideKick”

International Registration No IR680034 “T-Mobile”

International Registration No IR680035 “T.Mobile” (figurative)

Community Trademark No 003133601 “T-Mobile SideKick”

Community Trademark No 000485441 “T-Mobile”.

(Annexes H – I of the Complaint).

The relevant part of the Domain Names are <tmobilesidekickii> and <tmobilesidekick2>.

Both Domain Names consist of the Complainant’s registered and well known trademark T-MOBILE, with additions. As stated by the Complainant, with references to previous UDRP decisions, the absence of hyphens or the addition of other terms does not automatically create a domain name that is not identical or confusingly similar to an existing trademark, especially not when the trademark is well known. The Panel therefore concludes that both Domain Names are confusingly similar to Complainant’s mark T-MOBILE.

The Complainant has several trademark registrations for T-MOBILE SIDEKICK. The recent successor of the T-MOBILE SIDEKICK is named T-MOBILE SIDEKICK II, which is obviously a product and trademark well known on the US market as well as in other countries (see Annex E of the Complaint). The Panel finds it likely that the Complainant has obtained common law trademark rights to the term T-MOBILE SIDEKICK II.

Thus, the disputed Domain Names <tmobilesidekickii.com> and <tmobilesidekick2.com> are confusingly similar to T-MOBILE SIDEKICK as well as practically identical to T-MOBILE SIDEKICK II, especially as the letters “ii” in <tmobilesidekickii> written in capital letters would be II, forming T MOBILE SIDEKICK II.

The Panel therefore concludes that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Respondent is not an authorized agent or licensee of the Complainant’s products or services and has no other permission to apply for any domain name incorporating the trademarks T-MOBILE or T-MOBILE SIDEKICK (II).

By not submitting a Response, the Respondent has failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Names.

Respondent’s use of the Domain Names for commercial websites with several links to competitors of the Complainant cannot constitute a bona fide use of the Domain Names pursuant to paragraph 4(c)(i) of the Policy (See TM Acquisition Corp. v. Gary Lam, NAF FA0405000280499, holding Respondent’s use of the disputed domain name for a commercial web directory website linking users to competing services did not constitute a bona fide use or fair use pursuant to the UDRP; see also Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809, “Bona fide use does not exist when the intended use is a deliberate infringement of another’s rights.”).

The Panel therefore concludes that the Respondent has no legitimate interests in the Domain Names.

C. Registered and Used in Bad Faith

As concluded above, the Complainant’s trademarks T-MOBILE, T-MOBILE SIDEKICK and the version T-MOBILE SIDEKICK II are all well known. Complainant launched T-MOBILE SIDEKICK II in April 2004, and the Domain Names were registered six months later. It is clear that the Respondent had these trademarks in mind when he registered the disputed Domain Names, as they are practically identical to Complainant’s marks.

As stated in Robert J. Goodman, Box Brothers Corporation v. Gary Lam, WIPO Case No. D2004-0785, also cited by the Complainant, “If the Respondent was aware of the Complainant or the service mark, it is difficult to avoid the conclusion that the Respondent’s intention must have been to capitalize on the Complainant’s goodwill in the service mark.”

Both Domain Names are used for active web sites with presumably sponsored links to various mobile phone service providers and web shops (as shown by Annex J of the Complaint). The Panel concludes that the Respondent has used the Domain Names with the intention to attract Internet users to his web sites by creating a likelihood of of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the said web sites.

In addition, both web sites states that the Domain Names are for sale for 1,900 euro. This indicates that the Respondent has registered the Domain Names primarily for the purpose of selling them to the Complainant (or to a competitor) for a valuable consideration in excess of the Respondents documented out-of-pocket costs directly related to the Domain Names.

Thus, this Panel concludes that the Domain Names are both registered and used in bad faith, and that the Complainant has succeeded in proving the three elements within 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 Names, <tmobilesidekickii.com> and <tmobilesidekick2.com>, be transferred to the Complainant Deutsche Telekom AG.

P-E H Petter Rindforth
Sole Panelist

Dated: September 14, 2005