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Deutsche Telekom AG v. Alpha Pacific [2005] GENDND 1780 (18 October 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Deutsche Telekom AG v. Alpha Pacific

Case No. D2005-0722

1. The Parties

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

The Respondent is Alpha Pacific, Memphis, Tennessee, United States of America.

2. The Domain Names and Registrar

The disputed domain names <tmobiledates.com> and <tmobilematch.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 8, 2005. On July 8, 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 8, 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 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 27, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 16, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 18, 2005.

The Center appointed Amund Grimstad as the sole panelist in this matter on October 4, 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.

4. Factual Background

The Complainant is Europe’s largest telecommunications company, and has established a presence in the major economic centers of the world, serving customers in more than 65 countries around the globe through regional units.

“T-Mobile” is the corporate name under which the Complainant’s business in the mobile communications sector is conducted.

The Complainant has registered a large number of national, Community and International trademarks reflecting the terms “T-Mobile” and “T-Mobil”. The trademark upon which the complaint is specifically based is the registered trademark T-MOBILE with registration no. 2282432, which is protected in the United States of America since February 27, 1997. The mark is registered for a number of goods and services related to telecommunications services.

Furthermore, the Complainant owns the United States trademark T-MOBILE (registration no. 2284387).

Furthermore, the Complainant has registered the designation T-MOBILE as a Community trademark in the European Union (EU no. 000485441) and International trademarks (IR no. 680034 and IR no. 680035).

The Complainant and its subsidiary T-Mobile USA have registered and use – among others – the following domain names: <t-mobile.com>, <t-mobile.net>, <tmobile.net>, <t-mobile.us>, <tmobile.com.net>.

5. Parties’ Contentions

A. Complainant

The name “T-Mobile” is universally recognized and relied upon as identifying the Complainant. The Complainant’s subsidiary T-Mobile International is one of the largest GSM mobile communications providers in the United States and the world.

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 trademarks.

The Complainant further states that the Respondent does not use the disputed domain names for a bona fide offering of goods or services and is not making a legitimate non-commercial or fair use of it. Users of the domain names are directed to a web site hosted by the registrar GoDaddy Software.

The Complainant’s authorized representatives sent to the Respondent a “cease and desist” letter via mail and email on April 26, 2005. The Respondent did not answer.

The disputed domain name is argued to be confusingly similar to the Complainant’s trademark T-MOBILE.

The Complainant argues that the Respondent has failed to show any legitimate interest in the use of the disputed Internet domain name.

Furthermore, it is argued that the disputed domain name has been registered and is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

In order for the Complainant to successfully argue that the domain names must be transferred to the Respondent, the domain names must be identical or confusingly similar to a trademark or service mark in which the Complainant has rights. (Policy, paragraph 4(a)(i)).

The domain names <tmobiledates.com> and <tmobilematch.com> contain the T-MOBILE trademark creating a similarity to this trademark.

The Respondent uses the trademark with the addition of the words “date” and “match”. In the market for telecommunications and Internet services, the words “date” and “match” are used to describe dating services. Thus, the words which are added to the trademark are used as generic terms. The mere addition of common terms such as “date” and “match”, to a mark, does not change the overall impression of the designations as being domain names connected to the mark, see for example WIPO Case No. D2003-0920 and WIPO Case No. D2001-0020.

The use of the identical and similar trademark is likely to create confusion amongst consumers as to whether the web sites to which the domain names resolve are endorsed by or affiliated in some way with the Complainant.

The first requirement of the Policy has therefore been fulfilled.

B. Rights or Legitimate Interests

Secondly, the Complainant must show that the Respondent has no rights or legitimate interests in respect of the domain names. (Policy, paragraph 4(a)(ii)).

A complainant is required to make out an initial prima facie case that a respondent lacks rights or legitimate interests. The respondent then carries the burden of demonstrating rights or legitimate interests in a domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (WIPO Case No. D2003-0455).

The Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the domain names. In the absence of submissions from the Respondent, the Complainant is deemed to have satisfied paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Finally, the Complainant must show that the domain names have been registered and are being used in bad faith. (Policy, paragraph 4(a)(iii)).

The trademark of the Complainant is registered in a number of countries and is used worldwide. The question is whether the Respondent has registered the domain names in bad faith.

The Respondent’s domain names are used to link to a commercial website. This constitutes “commercial” use of the domain names.

If the Respondent has intentionally attempted to attract, for commercial gain, Internet users to an 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 other location, this is evidence of bad faith. (Policy, paragraph 4(b)(iv)).

The panel agrees that the trademark T-MOBILE is well known. It is most likely that the Respondent was aware of the Complainant, its reputation in the telecommunications industry and its trademarks, when the Respondent registered the domain names.

The Panel agrees with the decision rendered in WIPO Case No. D2000-0163, in that bad faith is found where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”. The use of the trademark T-MOBILE with the addition of the generic terms “match” and “date” suggests that the Respondent has acted in bad faith.

The third requirement of the Policy has therefore been fulfilled.

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, <tmobiledates.com> and <tmobilematch.com> be transferred to the Complainant.

Amund Grimstad
Sole Panelist

Dated: October 18, 2005