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Group Kaitu, LLC and Darkside Productions, Inc.v. DMFAK, Inc [2005] GENDND 343 (5 April 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Deutsche Telekom AG v. WWW Enterprise, Inc.

Case No. D2004-1078

1. The Parties

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

The Respondent is WWW Enterprise, Inc., Los Angeles, United States of America.

2. The Domain Name and Registrar

The disputed domain name <tmobil.net> is registered with OnlineNic, Inc. d/b/a China-Channel.com.

3. Procedural History

In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 4, 2005. The Center verified that the Complaint together with the amendment to 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 January 4, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was January 24, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 26, 2005.

The Center appointed William Lobelson as the Sole Panelist in this matter on February 1, 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 Deutsche Telekom, a major German telecommunication services provider, which also operates on an international scale through its subsidiary T Mobile International and in particular in the USA through a local subsidiary, T-Mobile USA.

The Complainant uses the brand T-MOBILE which is registered as domain names (<t-mobile.com.net>, <tmobile.net>, <t-mobil.net>) and as a trademark in numerous jurisdictions, and among others in the USA (Reg. 2282432 and 2284387).

Having noticed the registration and use of the domain name <tmobil.net> by the Respondent in relation with a search engine providing sponsored links, the Complainant attempted to contact the Respondent via e-mail and regular airmail, but in vain (letters returned by Post Office as undeliverable because name and address of Respondent are unknown).

The Complainant therefore filed the present proceedings and seeks the transfer of the domain name.

5. Parties’ Contentions

A. Complainant

The Complainant shows that it owns numerous trademark registrations for T-MOBILE, some of which are in force in the USA were the Respondent declares to be located. He emphasizes that the mark T-MOBILE is widely used on the US market.

The Complainant states that he has not authorized the Respondent to use its trademark.

The Complainant asserts that the disputed domain name has been registered and is being used with an intent to benefit from the reputation of its trademark.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant owns trademark registrations for T-MOBILE, whereas the disputed domain name is <tmobil.net>.

The deletion in the domain name of the final vowel “e” and the addition of the suffix”.net” do not, however, alter the confusing similarity that can be observed between T-MOBILE and <tmobil.net>. Visually, phonetically and conceptually, the earlier trademark and the disputed domain name show such a strong resemblance that the Panel is satisfied that the disputed domain name is confusingly similar to the trademark of the Complainant, in accordance with the provisions of Paragraph 4(a)(i) of the Policy. [See earlier decisions Chernow Communications, Inc. v. Jonathan D. Kimball, WIPO Case No. D2000-0119, and Deutsche Telekom AG v. Domainsforlife.com, WIPO Case No. D2002-0164]

B. Rights or Legitimate Interests

The Complainant states that the Respondent has not been appointed as representative, licensee or the like.

The Respondent has not submitted any arguments in order to justify a right or legitimate interest in the domain name.

Besides, the Panel observes that the disputed domain name points towards web pages which obviously do not seem to indicate that the Respondent would have any kind of trademark or trade name rights in the name “tmobil”. The Respondent’s website is indeed a search engine providing various sponsored links, which does not contain any reference to a commercial use of the name “tmobil” in the course of trade nor any suggestion that Respondent has been commonly known by the disputed domain name.

The Panel is therefore satisfied that the Respondent has no right or legitimate interest in the disputed domain name, in accordance with the provisions of Paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The name and address and e-mail address provided by the Respondent when registering the disputed domain name appear to be falsified. All e-mails and letters sent by the Complainant to the Respondent have remained without reply and the US Post Office mentioned that the name and address of the Respondent are unknown.

This is clearly a first hint of bad faith registration of the disputed domain name.

[See earlier decisions in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and BellSouth Intellectual Property Corporation v. Real Yellow Pages, WIPO Case No. D2003-0413].

Besides, the Complainant has shown that its trademark T-MOBILE is well known internationally and in the USA where the disputed domain name was registered.

The trademark T-MOBILE is used in relation with telecommunication services, in particular with the GSM mobile phones business. This is clearly a mass market which targets general public. The Complainant has submitted concrete elements showing that one of its subsidiaries, T-Mobile USA, is very active in the USA, where it counts 16.3 million customers.

The Panel may therefore reasonably consider that the Respondent, when he registered the domain name <tmobil.net>, could not be unaware of the Complainant’s use of the name T-Mobile on the US market. [See earlier decisions in Red Bull GmbH v. Harold Gutch, WIPO Case No. D2000 -0766, and eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633].

Anyway, the Respondent should have undertaken a clearance search in order to check whether the domain name was free of use and would not violate third parties’ interests. He would thus have detected the earlier rights of the Complainant.

Having neglected to do so, the Respondent has demonstrated evident carelessness. [See earlier decision in Australian Stock Exchange Limited and ASX Operations Pty Limited v. Community Internet (Australia) Pty Ltd, WIPO Case No. D2000-1384].

The Panel is thus satisfied that the disputed domain name was registered in bad faith in accordance with provisions of Paragraph 4(a)(iii) of the Policy.

The domain name <tmobil.net> is active and points towards a portal website which simply lists various sponsored links.

It now a well-known practice to display on a web page or search engine various links to other commercial websites: every link activated by an Internet user enables the hoster of the search engine to collect a financial remuneration proportional to the number of connections.

As already explained above, there is no obvious relationship between this search engine and the name “tmobil” which does not seem to be used by the Respondent as a trade name or trademark on his website.

The notoriousness of the Complainant’s trademark has also been discussed and acknowledged above.

It seems very likely, therefore, that the Respondent has deliberately adopted the disputed domain in order to take advantage from the fame and goodwill of the Complainant’s trademark, with a view to attracting the Complainant’s actual and potential customers to its sponsored links and thus make business and financial gains to the detriment of the Complainant (Paragraph 4(b)(iv) of the Policy). [See earlier decisions in Nora Baumberger v. SAND WebNames – For Sale, WIPO Case No. D2001-0502, and Microsoft Corporation v. MindKind, WIPO Case No. D2001-0193].

The Panel is therefore satisfied that the disputed domain name is used in bad faith.

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 <tmobil.net> be transferred to the Complainant.

William Lobelson
Sole Panelist

Dated: February 15, 2005