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Deutsche Telekom AG v. Jack Filkey [2005] GENDND 1957 (9 November 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Deutsche Telekom AG v. Jack Filkey

Case No. D2005-0910

1. The Parties

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

The Respondent is Jack Filkey, Apache Junction, Arizona, United States of America.

2. The Domain Name and Registrar

The disputed domain name <tmobilephonefree.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 25, 2005. On August 26, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On August 31, 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 2, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was September 22, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 27, 2005.

On September 28, 2005, the Center received a Response via e-mail from the Respondent. In light of the said e-mail, the Center requested the Complainant to confirm whether the proceedings should be suspended for the parties to reach a settlement or whether the Center should proceed. On October 5, 2005, the Complainant filed a reply to the Center’s request, confirming that the Center should proceed.

The Center appointed Mr. P-E Petter Rindforth as the Sole Panelist in this matter on October 10, 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 Panel noted that the Respondent had filed a Response after the due date for the Response but before the transmission of the case file to the Panel. In the interests of fairness and in accordance with paragraph 10(b) of the Rules, the Panel decided to consider the Response. The Panel further noted that the Respondent had claimed to be an “authorized dealer…through Telbay.com”.

Accordingly, on October 19, 2005, the Panel issued an Administrative Panel Procedural Order No. 1, requesting i) the Complainant’s comments on the Respondent’s statement, and ii) the Respondent provide evidence in support of his claim to be an authorized dealer. The Complainant and the Respondent were given until November 3, 2005, to reply to the Center, and the due date for the decision was extended to November 9, 2005. The replies from Complainant and the Respondent were timely received by the Center on November 3, 2005.

According to the Rules, paragraph 10(b), the Panel “shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case”.

Accordingly, the Administrative Panel shall issue its Decision based on the Complaint, the Response, the Responses to the Administrative Panel Procedural Order No.1, 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 of America (Annex C of the Complaint).

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 United States of America, offering all digital voice, messaging and high-speed wireless data services to more than 17.3 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. (Annex H of the Complaint).

The disputed domain name was registered on February 14, 2005.

5. Parties’ Contentions

A. Complainant

The Complainant states that the domain name <tmobilephonefree.com> is confusingly similar to the famous trademark T-MOBILE, as it substantially incorporates the Complainant’s trademark with the addition of a generic term.

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 argues the fact that the disputed domain name has a different capitalization and hyphenation in comparison with the Complainant’s trademark T-MOBILE has got no effect in this case, since “this distinction does not change the likelyhood of confusion” (BIC Deutschland GmbH & Co. KG v. Paul Tweed, WIPO Case No. D2000-0418).

Complainant declares that 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 marks, as stated at the Respondent’s website.

The Complainant further states that the Respondent does not use the domain name for a bona fide offering of goods or services and is not making a legitimate non-commercial or fair use of it. The domain name is directed to a website which contains sponsored links and displays the logo of T-MOBILE with a line beneath saying “authorized dealer”, which is, according to the Complainant, not true. The use of the trademark T-MOBILE in connection with the generic term “phonefree” indicates that the users of the website will find products of the Complainant that are for free.

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 <tmobilephonefree.com>. The obvious evidence in this respect is the fact that the Respondent actually uses the Complainant’s trademark on the website corresponding to the disputed domain name.

A cease and desist letter was sent on July 15, 2005, to Respondent from the Complainant’s representatives, requesting the transfer of the domain name to the Complainant. The Respondent did not reply to the letter or to the following reminder (copies of the correspondence provided as Annex J and K of the Complaint). The letter sent to the Respondent’s P.O. Box address was returned to the Complainant’s representatives with the remark “box closed – no order” on August 23, 2005 (Annex L of the Complaint).

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 claims to be registered to sell T-MOBILE services through Telebay.com for almost two years, and that he is an authorized dealer through Telebay.com. The domain name and the corresponding website was registered and built to further support the sale of T-MOBILE and the Respondent’s commissions.

The Respondent declares that there are several links on the website, directing visitor’s to T-MOBILE service and sales pages.

Respondent further states that the domain name is sufficiently different from the trademark T-MOBILE.

Finally, the Respondent expresses his willingness to find a way to continue to work together with the Complainant for mutual benefits and to develop the website “creating even more good will and benefit for everyone involved”.

C. Respondent’s reply to the Administrative Panel Procedural Order No. 1

In Respondent’s Response to the Panel Order, he refers to two e-mail messages from Telebay.com, the first confirming that the Respondent is not “really considered authorized dealer per se”, but an affiliate.

In the second message, Telebay.com confirms that Respondent currently sells T-MOBILE services with Telebay.com, and that the domain name was registered in order to market Telebay.com’s free phone offers with T-MOBILE service.

D. Complainant’s reply to the Administrative Panel Procedural Order No. 1

Complainant states that Respondent’s reply to the Panel Order clearly shows that there is no authorized dealership and there has never been a contractual or any kind of relationship between the Complainant or its subsidiaries and the Respondent.

Further, the Complainant expressly prohibits all its Internet dealers and their affiliates to register domain names containing the term T-MOBILE.

The Complainant also questions the Respondent’s statement that he sells any of the Complainant’s T-MOBILE products, arguing that “the whole website is only a conglomeration of various sponsored links”, leading to other resellers that also sell products from the Complainant’s competitors.

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 “tmobilephonefree”. Accordingly, the domain name consists of the Complainant’s trademark T-MOBILE, with the addition of the generic term “phonefree”, indicating that the connecting website offers free telephone / mobile phone services in relation with T-MOBILE goods or services.

T-MOBILE is a famous trademark and the absence of the hyphen and the addition of a generic term is not enough to change the impression of <tmobilephonefree.com> being confusingly similar to Complainant’s trademark, see Chernow Communications, Inc v. Jonathan D. Kimball, WIPO Case No. D2000-0119 and Fuji Fotofilm USA, Inc. v. LaPorte Holdings, WIPO Case No. D2004-0971.

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

B. Rights or Legitimate Interests

The Respondent states that he is an authorized dealer through Telebay.com and that the domain name was registered for the purpose of support the sale of T-MOBILE related services and Respondent’s commissions, thereby claiming to have a legitimate interest in the domain name.

As confirmed by the Complainant (as well as by Telebay.com), the Respondent is however not an authorized dealer or licensee of the Complainant’s products or services and has no other permission to apply for any domain name incorporating the trademark T-MOBILE. As established in a number of prior cases, such as The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113, R.T. Quaife Engineering, Ltd. and Autotech Sport Tuning Corporation d/b/a Quaife America v. Bill Luton, WIPO Case No. D2000-1201 and Nokia Corporation v. Nick Holmes t/a EType Media, WIPO Case No. D2002-0001 the collateral trademark use necessary to allow resell of and/or customer support in connection with the Complainant’s products does not necessary confer the right to use the trademark as a domain name.

Such use and registration, without the permission of the trademark owner, does not in this Panel’s view create a right or legitimate interest in the domain name.

In the Administrative Panel Procedural Order No. 1, the Panel requested the Respondent to provide evidence in support of his claim to be an authorized dealer. The Respondent was not able to provide any contract or other agreement confirming such status.

The Panel therefore concludes that the Respondent has no rights to 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 Unites States of America, the country of the Respondent. Moreover, the Respondent does not deny having registered the domain name especially with the Complainant’s trademark in mind. That clearly indicates bad faith registration, as also stated by the Panel in Deutsche Telekom AG v. Britt Cordon, WIPO Case No. D2004-0487.

The Respondent claims however that the registration and use of the disputed domain name was not conducted in bad faith, as it was for the benefit of both Complainant and the Respondent.

The Panel notes that Respondent has not been able to provide any evidence in support of his claim to have registered the domain name in good faith. On the contrary, it seems that the registration was made for the sole purpose of increasing Respondent’s commissions. The Respondent must have been aware of the fact that he is not an authorized dealer of the Complainant’s products and services. The reference to “authorized dealer” is therefore a false statement, used to intentionally create a likelihood of confusion with the Complainant’s mark as to the affiliation of his website.

The use of Complainant’s famous mark and logo T-MOBILE on the website increase the said likelihood of confusion.

The Respondent further claims to have been “registered to sell T-MOBILE services through Telebay.com for almost two years”. This statement has not been confirmed. The reply from Telebay.com that Respondent “currently sell T-mobile services with us” rather indicates that Respondent’s co-operation with Telebay.com is more recent. Be that it may, as pointed out by the Complainant, the website connected to the domain name is not the one of a traditional re-seller, but rather a loosely mix of sponsored links, see Electronics Inc. v. J. Lee, WIPO Case No. D2005-0170: “the sole use of the disputed domain name to divert traffic to a site providing sponsored links of various commercial companies is indicative of bad faith”.

Finally, the Respondent has failed to respond to the Complainant’s cease and desist letters, sent prior to the commencement of this proceeding. If the Respondent really had been under the impression that he had legitimate rights to register and use the domain name, replying to these letters would have been the easy and natural way to explain his alleged good faith.

Thus, this 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, <tmobilephonefree.com> be transferred to the Complainant.

P-E H Petter Rindforth
Sole Panelist

Dated: November 9, 2005