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Deutsche Telekom AG v. Phonotic Ltd. [2005] GENDND 1918 (22 November 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Deutsche Telekom AG v. Phonotic Ltd.

Case No. D2005-1000

1. The Parties

The Complainant is Deutsche Telekom AG, Bonn, Germany, represented by Dr. Matthias Koch, Lovells Rechtsanwälte, Munich, Germany.

The Respondent is Phonotic Ltd., Johannesburg, South Africa.

2. The Domain Name and Registrar

The disputed domain name <t-mobilez.com> is registered with InnerWise, Inc. d/b/a ItsYourDomain.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2005. On September 21, 2005, the Center transmitted by email to InnerWise, Inc. d/b/a ItsYourDomain.com a request for registrar verification in connection with the domain name at issue. On September 22, 2005, InnerWise, Inc. d/b/a ItsYourDomain.com 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 October 6, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 26, 2005. The Respondent did not submit any full response within the prescribed delay. However, the Center decided to treat previous communications with the Respondent as a response. The previous communication consists of e-mails from the Respondent to WIPO of September 24, 2005, September 26, 2005 and October 9, 2005.

The Center appointed Anders Janson as the Sole Panelist in this matter on November 8, 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 covers the entire spectrum of modern telecommunications. The Complainant’s subsidiary T-Mobile International AG & Co. KG (“T-Mobile”) is one of the largest GSM mobile communications providers in the world. “T-Mobile” is the corporate name under which the Complainant’s business in the mobile communications sector is conducted. More than 121 million people worldwide use the services of the T-Mobile group. T-Mobile Hungary Telecommunication Company Ltd. is the leading mobile operator of Hungary. As part of the T-Mobile group the number of customers of the company exceeded 3,8 million in May 2004.

The Complainant owns domain names such as <t-mobile.com>, <t-mobile-international.com>, <t-mobile.net> and <t-mobile.hu>.

Furthermore, The Complainant has registered a large number of national, Community and international trademarks reflecting the term “T-Mobile”, including the International Registrations No. 680034 and No. 680035 and the Community Trademark 485441. Furthermore, in South Africa the Complainant is the registered owner of T-MOBILE trademarks with the registration numbers 97/0280-1 through 97/0280-11.

The International trademark IR 680034 upon which the Complaint is specifically based is registered for the following goods and services in the following classes; 9, 14, 16, 18, 25, 28, 36, 37, 38, 41 and 42. The Panel finds it established that T-MOBILE is a well-recognized trademark and that the trademark is both distinctive and famous.

The Respondent is Phonotic Ltd with a registered address in Johannesburg, South Africa. At the time of drafting this decision, the disputed domain name resolved to the website “www.karpati.be”, the site of a company called Karpati Webstudio. At the site, the surfer had the option of reading the information in English or Hungarian. The company seemed to direct its services to several national markets, both English-speaking and Hungarian-speaking.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- The disputed domain name is identical and confusingly similar to trademarks or service marks in which the Complainant has rights;

- The Respondent has no rights or legitimate interests in respect of the domain name;

- The domain name have been registered and are being used in bad faith; and

- The domain name <t-mobilez.com> should be transferred to the Complainant.

B. Respondent

The Respondent, represented by Mr. Karpati (the individual listed as the administrative, technical and billing contact in the WHOIS record), has responded as follows. The domain name in dispute was bought in 2004. “T-Mobilez” is a short form of “Thinking Mobilez”, a range of products that was developed by Mr. Karpati’s company. After his company ceased to develop these products, he offered to sell the domain name in dispute to Deutsche Telekom. As far as can be understood from the correspondence of Mr. Karpati, he claims that the Respondent shared the domain with Mr. Karpati’s company.

The Panel finds that there has not been presented any proof of that Phonotic Ltd is not the correct Respondent in this Dispute.

6. Discussion and Findings

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain name registered by the Respondent 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 disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The domain name at issue is <t-mobilez.com>. The Complainant is the holder of the registered trade name T-MOBILE as well as the domain names domain names such as <t-mobile.com>, <t-mobile-international.com>, <t-mobile.net> and <t-mobile.hu>. The trade name T-MOBILE is in use of commerce. The disputed domain name contains the Complainant’s trade name T-MOBILE in its entirety, with a different capitalization and the addition of the single letter “z”.

When determining whether a domain name and a trademark are identical or confusingly similar, the suffix “.com” shall be disregarded. In previous decisions, the Panelists have found that the fact that a domain name incorporates a Complainant’s registered mark is sufficient to established identical or confusingly similarity for the purpose of the Policy. The fact that the disputed domain name has a different capitalization has no effect in this case, nor does the addition of the singe letter “z”. The domain name must therefore be considered confusingly similar to the trade name T-MOBILE. The panel holds that the Complainant has established element (i) of the Policy’s Paragraph 4(a).

B. Rights or Legitimate Interests

The Complainant asserts that the Respondent has not shown any legitimate interest in the use of the disputed 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 by the Respondent. The Complainant has asserted that the Respondent is not authorized or licensed to use the Complainants marks and that 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-Mobile” prior to registration of the domain name. Furthermore, there is no indication that the Respondent has any rights as to the designation “Thinking Mobilez”. Since the disputed domain name incorporates the entire mark of the Complainant, there is no plausible good faith use of the domain name.

Given the circumstances, when the Respondent does not have an obvious connection with the disputed domain name, a prima facie case put forward the Complainant that the Respondent has no right or legitimate interest is enough to shift the burden of proof to the Respondent to demonstrate that such right and legitimate interest exists. The Panel fins that the Respondent has not, in the Response given, demonstrated that such right and legitimate interest exists.

The Respondent has not demonstrated or argued that he used or prepared to use the disputed domain name in connection with a bona fide offering of goods or services or that any other right or legitimate interest exists. Registration of a domain name in itself does not establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy. In conclusion, the Respondent has not presented any evidence of rights or legitimate interests in using the disputed domain name and has no obvious connection to it. The Panel therefore holds that the Complainant has established element (ii) of the Policy’s paragraph 4(a).

C. Registered and Used in Bad Faith

Finally the Panel has to consider the question of whether the disputed domain name has been registered and used in “bad faith”.

Paragraph 4(b) states four (non-exclusive) circumstances which, if found to be present, are deemed to provide evidence of bad faith in registering and using the domain name. Paragraph 4(b)(iv) states that one of the circumstances indicating bad faith is the use of a domain name to intentionally attempt to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation or endorsement of the website or location or of a product or service featured on the website or location.

An Internet user searching for products provided by the Complainant is likely to visit the Respondent’s site. The Panel has established that the trade name T-MOBILE is recognizable and famous. The Panel considers it highly unlikely that the Respondent has registered the disputed domain name by coincidence, which, apart from the capitalization and the addition of the single letter “z”, is identical with the Complainant’s trade name.

Furthermore, the Respondent has not presented any reasons, evidence or arguments of a legitimate interest in using the disputed domain name. There are no obvious reasons for the Respondent to have legitimately used the domain name. As has been mentioned above, the only use of the domain name seems to be to market and offer products with no association to the Complainant.

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, <t-mobilez.com> should be transferred to the Complainant.

Anders Janson
Sole Panelist

Dated: November 22, 2005