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Deutsche Telekom AG v. Pimptel Inc. [2005] GENDND 1762 (25 October 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Deutsche Telekom AG v. Pimptel Inc.

Case No. D2005-0928

1. The Parties

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

The Respondent is Pimptel Inc., Beverly Hills, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <free-t-mobile-ringtone.com> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2005. On September 1, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On September 2, 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 September 6, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was September 26, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 27, 2005.

The Center appointed Mr. P-E H Petter Rindforth as the sole panelist in this matter on September 29, 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 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 worldwide.

The Complainant’s subsidiary T-Mobile International AG & Co. KG 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. “T-Mobile” is the corporate name under which the Complainant’s business in the mobile communications sector is conducted. The Complainant owns a number of national, Community and international trademarks reflecting the term “T-Mobile”, such as:US Registration No. 2282432 “T-MOBILE”, filed in February 27, 1997, and registered October 5, 1999, in respect of goods and services in Intl. Classes 9 (telecommunication equipments, etc.), 14, 16, 18, 25, 28, 36, 37, 38 (telecommunication services and equipment including signals), 41 and 42 (printout from SAEGIS provided as Annex E of the Complaint).

US Registration No. 2284387 “T-MOBILE” (figurative)

Community Trademark No 000485441 “T-Mobile”

International Registration No IR680034 “T-Mobile”

International Registration No IR680035 “T Mobile” (figurative)

(Annexes F – G of the Complaint).

The Complainant has also registered a number of domain names including the mark T-MOBILE or variations thereof. A printout from the respective Whois databases for these domain name registrations is provided as Annex H of the Complaint.

In June 2005 the Complainant learned that the Respondent had registered the disputed Domain Name. The Complainant’s authorized representatives sent to the Respondent a “cease and desist” letter via mail and email on July 15, 2005, requesting the Respondent to transfer the Domain Name to the Complainant and to refrain from registering any further domain names containing the mark “T-MOBILE” or any confusingly similar term (Annex J of the Complaint). The Respondent did not reply and Complainant’s letter was returned on August 22, 2005, as undeliverable.

The disputed Domain Name was registered on February 21, 2005. No specific information was provided about the Respondent’s business activities.

5. Parties’ Contentions

A. Complainant

The Complainant states that the Domain Name is confusingly similar to the trademark T-MOBILE, as it substantially incorporates the Complainant’s trademark with the addition of generic terms. This leads Internet users to the assumption that the Domain Name might be connected to or authorized by the Complainant’s subsidiary T-Mobile.

In this respect, Complainant refers to previous UDRP decisions, such as Nokia Corporation v. Horoshiy, Inc., 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 been expressed repeatedly by other panels […].”

Complainant declares 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 Complainant argues that the disputed Domain Name was registered and used in bad faith. Upon entering the Domain Name a website shows up containing sponsored links for ring tones. Sponsored links are a special form of paid advertisement that enables the owner of a website to earn money when Internet users click on these links (copy of the said web site provided as Annex I of the Complaint).

When registering the Domain Name the Respondent had knowledge of the Complainant’s trademarks and business names. This is evident given the worldwide fame of the Complainant’s trademarks. The Respondent registered the Domain Name with the intent to use the reputation associated with the famous trademark and business name T-MOBILE.

The Complainant further argues that the Respondent has used the Domain Name with the intention to attract, for commercial gain, Internet users to his web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark.

The Complainant is of the opinion that his repeated and unfruitful attempts to contact the Respondent prior to the filing of the complaint amounts to a prima facie showing of bad faith. The Complainant refers to Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/k/a Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330: “The fact that […] Respondents failed to respond to Complainant’s efforts to make contact provide[s] strong support for a determination of “bad faith” registration and use””.

The Complainant requests, in accordance with Paragraph 4(i) of the Policy, that the Administrative Panel issue a decision that the Domain Name 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 is the holder of several trademark registrations for T-MOBILE, in particular the US Registration No. 2282432””.

The relevant part of the Domain Name is <free-t-mobile-ringtone>. Accordingly, the Domain Name consists of the Complainant’s trademark T-MOBILE, with the addition of the generic terms “free” and “ringtone”, indicating that the connecting web site offers free ringtones in relation with T-Mobile goods or services. Even if T-MOBILE appears in the middle of the Domain Name, it must still be considered as the predominant part as T-MOBILE is a famous mark.

As argued by the Complainant with reference to previous UDRP decisions, the addition of generic terms to a trademark does not automatically result in a domain name that is not confusingly similar to the trademark, especially when the latter is well known.

The Panel therefore concludes that <free-t-mobile-ringtone.com> is confusingly similar to Complainant’s mark T-MOBILE.

B. Rights or Legitimate Interests

The domain name chosen by the Respondent indicates some kind of affiliation with the Complainant and it’s products and services. However, according to the Complainant, the Respondent is not an authorized agent or licensee of the Complainant’ and has no other permission to apply for any domain name incorporating the trademark T-MOBILE or anything confusingly similar thereto.

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 Name.

Respondent’s use of the Domain Name for a website with sponsored links to ring tones does not constitute a bona fide use of the Domain Name pursuant to Paragraph 4(c)(i) of the Policy.

The Panel therefore concludes that the Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

As concluded above, the Complainant’s trademark T-MOBILE is well known, and especially so in the USA, the country of the Respondent. It seems highly unlikely that the Respondent had no knowledge of the Complainant’s trademark rights when he registered the disputed Domain Name.

The Domain Name is used for a web site displaying sponsored links to several ring tone sites (such as “Cool Mobile Ringtones”, “Ringtone galore”, “Free Cell Phone Ring Tone”, and “Ringtones Forever”), (as shown by Annex J of the Complaint), thus enabling the Respondent to earn revenues by attracting users to his web site.

The site is entitled “Free t mobile ringtone”. Even if the Complainant’s trade mark is written in lower-case letters, this use adds to the presumption that the site is somehow connected with the Complainant, creating a risk of further confusion among the visitors of the site.

As stated by the Complainant, a cease and desist letter was sent to Respondent and returned as undeliverable. Complainant sent a reminder, still with no response from the Respondent. Respondent’s failure to reply to the letters from the Complainant seems to indicate, in the present case, that the Domain Name was registered and is being used in bad faith.

In the absence of any clarification or statements to the contrary from the Respondent, the Panel concludes that the Respondent registered and is using the Domain Name with the only intention of attracting Internet users to his own web site through a confusion with the Complainant’s “T-MOBILE trademark”.

Accordingly, 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 name, <free-t-mobile-ringtone.com> be transferred to the Complainant.

P-E H Petter Rindforth
Sole Panelist

Dated: October 25, 2005