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Deutsche Telekom AG v. Gems N Pearls International Holding [2005] GENDND 1809 (5 October 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Deutsche Telekom AG v. Gems N Pearls International Holding

Case No. D2005-0820

1. The Parties

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

The Respondent is Gems N Pearls International Holding, New York, New York, United States of America.

2. The Domain Name and Registrar

The disputed domain name <tmobileshops.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 1, 2005. On August 1, 2005, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On August 2, 2005, Network Solutions, LLC 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 August 4, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August  24, 2005. The Response was filed with the Center on August 25, 2005.

The Center appointed Petter Rindforth as the sole panelist in this matter on September 21, 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.

As the Response was filed only one day late, in the interests of fairness and in accordance with paragraph 10(b) of the Rules, the Panel has considered the Response. Accordingly, the Panel shall issue its Decision based on the Complaint, the Response, the Policy, the Rules and the Supplemental Rules. 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 encouraging 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 US66 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 (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 United States of America, offering all digital voice, messaging and high-speed wireless data services to more than 16.3 million customers.

The Complainant has registered a large number of national, Community and International trademarks reflecting the term “T-Mobile”, such as:

United States Registration No 2282432 T MOBILE (covering goods and services in Classes 9, 14, 16, 18, 25, 28, 36, 37, 38, 41 and 42);

International Registration No IR680034 T-MOBILE;

International Registration No IR680035 T-MOBILE (figurative);

Community Trademark No 000485441 T-MOBILE;

(as shown in Annex E of the Complaint).

The Complainant and its subsidiary T-Mobile USA are also the holders of a number of domain name registrations, among others: <t-mobile.com>, <t-mobileshop.com>, <t-mobileshop.biz>, <tmobile-shop.biz>, <tmobile-shop.com>, <t-mobile-shop.com>, etc. (Annexes G and H of the Complaint).

The Complainant sent a cease and desist letter to Respondent on April 22, 2005, demanding that the Respondent assign the Domain Name to the Complainant. After a reminding e-mail from the Complainant, Respondent – represented by Mr. King Yo - replied via e-mail stating that he had no intentions of transferring the Domain Name to anyone, that he “legally registered” the Domain Name and that he had not done anything against the business of the Complainant (Annex J of the Complaint).

The Respondent registered the disputed Domain Name on October 24, 2004. Respondent is, as it is understood by the Panel, planning to start a website to sell cellular phone accessories online.

5. Parties’ Contentions

A. Complainant

The Complainant states that <tmobileshops.com> is confusingly similar to the well known trademark T-MOBILE. The added generic term “shops” leads Internet users to the assumption that the Domain Name might be connected to or authorized by Complainant’s subsidiary T-Mobile.

Complainant further states that the Domain Name does not appear to be in use for any bona fide offering of goods or services. The Respondent was not known by the names “t-mobile” or “tmobile” prior to the registration of the Domain Name and Respondent is not authorized or licensed to use the Complainant’s mark.

Finally, the Complainant argues that the disputed Domain Name has been registered and is being used in bad faith. Given the wide reputation of Complainant’s trademark T-MOBILE, the Respondent must have been aware of the Complainant’s mark at the time of the registration of <tmobileshops.com>. Respondent used the Domain Name for a web page with various sponsored links to other commercial websites, thereby allowing the Respondent to make commercial gains.

B. Respondent

The Respondent contests the Complainant’s allegations that the Domain Name is registered and used in bad faith. The Respondent also denies that the trademark T-MOBILE can be considered identical or confusingly similar to “tmobileshops” or “tmobileshops.com” (or for that matter a number of other T-Mobile extensions such as “tmobilestore”, “tmobilemall”, “tmobilecenter”, etc).

The Respondent states that in order to sell “T-Mobile cellular service” in the United States or in Europe, a master dealer contract or authorized retailer contract is necessary. In this case, such contract must be granted by T-Mobile USA, however the site <tmobileshops.com> is still under construction.

Respondent registered the disputed Domain Name in order to sell cellular phone accessories online, with a huge discount price as “customers are over paid for accessories”.

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 holds trademark rights in T-MOBILE, which is a well known trademark in the telecommunications industry.

The relevant part of the Domain Name is “tmobileshops”. Accordingly, the Domain Name consists of Complainants trademark T-MOBILE, followed by the generic term “shops”, indicating a place where goods and services of T-Mobile can be found.

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 when the trademark is well known.

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

B. Rights or Legitimate Interests

The Respondent has not contested the Complainant’s statement that Respondent is not an authorized agent or licensee of the Complainant’s products or services. On the contrary, Respondent admits that in order to be able to sell products under the trademark T-MOBILE, it is necessary to obtain a master dealer contract or an authorized retailer contract with T-Mobile USA.

The Respondent has stated that the Domain Name was registered as a preparation for creating a website selling hugely discounted cell phone accessories.

However, and provided that Respondent planned to sell non-piracy goods by using the Domain Name , the collateral trademark use necessary to allow reselling, after market sale, customer support, etc. in connection with the Complainant’s products does not confer the right to use the trademark as a domain name without permission from the trademark owner. Moreover, the Panel notes that the Respondent also uses the web page for commercial aims other than selling the Complainant’s goods and services, cf. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

Therefore, the Panel finds that the Respondent has no rights or legitimate interests in respect of 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 United States, the country of the Respondent. Further, the Complainant holds a number of domain name registrations for “t-mobile” with the addition of the word “shop”, registered prior to <tmobileshops.com> (printouts from the Whois databases for these domain names were provided as Annex H of the Complaint).

Thus, it is clear that the Respondent had this trademark in mind when he registered the disputed Domain Name, and that the addition of the generic word “shops” was not made in order to make a difference, but rather a deliberate attempt to create a likelihood of confusion with Complainant’s mark and services as to the source, sponsorship, affiliation, or endorsement of the website connected with the Domain Name.

The Respondent admits that he plans to use the Domain Name to sell “cellular phone accessories online”. Respondent is also well aware of the fact that in order to sell Complainant’s (original) products, Respondent will have to seek permission from Complainant’s subsidiary T-Mobile. Nevertheless, the Respondent did not only register the Domain Name without such permission, it was also – at least for a while – used in connection with a website with presumably sponsored links to various mobile phone service providers and web shops.

The Panel concludes that the only intention of Respondent in registering and using the Domain Name was to attract Internet users to the Respondent’s website by creating a Domain Name both confusingly similar to the Complainant’s trademark T-MOBILE but also almost identical to Complainants “T-mobileshop”-domain names.

Thus, the Panel concludes that the Domain Name is 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 name, <tmobileshops.com> be transferred to the Complainant.

P-E H Petter Rindforth
Sole Panelist

Dated: October 5, 2005