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Deutsche Telekom AG v. Keyword Traffic [2005] GENDND 425 (30 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Deutsche Telekom AG v. Keyword Traffic

Case No. D2005-0443

1. The Parties

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

The Respondent is Keyword Traffic, Blaine, Washington, of United States of America.

2. The Domain Name and Registrar

The disputed domain name <tmobilephonedeals.com> (hereinafter ‘the Domain Name’) is registered with Intercosmos Media Group d/b/a directNIC.com (the Registrar).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) electronically on April 22, 2005, and in hard copy on April 26, 2005. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. The same day, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the administrative, billing, and technical contact details. 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 May 18, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was June 7, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 10, 2005.

The Center appointed Anna Carabelli as Sole Panelist in this matter on June 16, 2005, indicating that, absent exceptional circumstances, the decision would be due by June 30, 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

Complainant is one of the largest telecommunications companies in the world. The Complainant’s websites under “www.deutsche-telekom.com” and“www.t-mobile.com” (Attachments C and D to the Complaint) confirm it is present in more than 50 countries worldwide, offering integrated solutions in the market of telecommunications, including phones and services for mobile communications.

Complainant has provided evidence (Attachments E, F and G to the Complaint) of registration of the following US, EU and international trademarks reflecting the name “T-mobile”:

- USA Reg. No. 2282432 filed on February 27, 1997 in connection with international classes of goods and services CL. 9, 14, 16, 18, 25, 28, 36, 37, 38, 41, 42;

- USA Reg. No. 2284387 filed on February 27, 1997 in connection with international classes of goods and services CL. 9, 14, 16, 18, 25, 28, 36, 37, 38, 42;

- EU Reg. No. 00485441 filed on February 26, 1997 in connection with international classes of goods and services CL. 9, 14, 16, 18, 25, 28, 36, 37, 38, 41, 42;

- International Reg. No. 00680034 filed on February 26, 1997 in connection with international classes of goods and services CL. 9, 14, 16, 18, 25, 28, 36, 37, 38, 41, 42.

The Complainant has further provided evidence (Attachment H to the Complaint) of registration of the domain names <t-mobile.com>, <t-mobile.us>, <tmobile.com>, <t-mobile.net>.

The Respondent registered the Domain Name on February 7, 2005 (Attachment A to the Complaint) and has been using it in connection with a site containing a search engine and a list of sponsored links (Attachment I to the Complaint).

On March 22, 2005 the Complainant sent to the Respondent a cease and desist letter (Attachment J to the Complaint) which was never answered by the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- it is Europe’s largest telecommunications company and one of the worldwide engines of innovation in the industry, covering the entire spectrum of modern telecommunications;

- Complainant’s subsidiary T-MOBILE International is one of the largest GSM mobile communications providers in the world;

- the name T-MOBILE is universally recognized and relied upon as identifying the Complainant, since it is the corporate name under which the Complainant’s business in the mobile communications sector is carried out;

- the Domain Name is confusingly similar to the Complainant’s trademark, company and trade name “T-MOBILE”; the addition of the generic words “phone deals” to the Complainant’s famous trademark is not apt to avoid a likelihood of confusion;

- the Respondent has no right or legitimate interest in the Domain Name since: (i) it is not, and never has been, a representative or licensee of the Complainant, nor is otherwise authorized to use the Complainant’s marks; (ii) there is no indication of the Domain Name being used in connection with a bona fide offering of goods and services or of the Respondent’s making or intending to make a legitimate non-commercial or fair use of the Domain Name according to paragraphs 4(c)(i) and 4(c)(iii) of the Policy; (iii) there is no indication that the Respondent was known by the Domain Name according to paragraph 4(c)(ii) of the Policy;

- the Domain Name has been registered in bad faith since when registering it, the Respondent had knowledge of the Complainant’s trademarks and business names, given the worldwide fame of the Complainant’s trademarks;

- the Domain Name is being used in bath faith, since (i) by using the Domain Name, the Respondent has intentionally attempted to attract Internet users to its website for commercial gain; (ii) the display on the Respondent’s website of sponsored links to other commercial websites allows the Respondent to collect a financial remuneration proportional to the number of connections.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Under paragraph 4(a) of the Policy, the Complaint must prove each of the following:

(i) the domain name in issue is identical or confusingly similar to the Complainant’s trademark or service mark; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

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

Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purposes of paragraph 4(a)(iii), shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii) above.

A. Identical or Confusingly Similar

The Complainant is required under paragraph 4(a)(i) of the Policy to prove that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights.

The Complainant has proven to have acquired trademark rights in the “T-MOBILE” name since 1997 by virtue of a number of US, EU and international registrations. T-MOBILE is also the corporate name under which the Complainant’s business in the mobile communications sector is being conducted worldwide.

The Domain Name incorporates the Complainant’s trademark “T-MOBILE” but without the hyphen and with the addition of the generic words “phone deals”. It is an established principle that the use or absence of punctuation marks, such as hyphens, does not influence the consideration of similarity or alter the fact that a name is identical to a mark (See Chernow Communications, Inc. v. Jonathan D. Kimball, WIPO Case No. 2000-0119; BIC Deutschland GmbH & Co KG v. Paul Tweed, WIPO Case No. 2000-0418; The Channel Tunnel Group Ltd. v. John Powell, WIPO Case No. 2000-0038). It has also been consistently affirmed that the mere addition of a generic term and/or number as well as slight spelling variations do not create a different trademark and cannot be considered sufficient to avoid confusion between the Domain Name and the complainant’s trademark (GA Modefine SA v. Riccardo Bin Kara-Mat, WIPO Case No. D2002-0195; Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022; Nintendo of America, Inc. v. Gray West International, WIPO Case No. D2000-1219; Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp., WIPO Case No. D2000-0464 – see also A & F Trademark, Inc., Abercrombie & Fitch Stores, Inc., Abercrombie & Fitch Trading Co. Inc. v. Party Night, Inc., WIPO Case No. D2003-0172; Lanco, Inc., Lane Bryant, Inc. and Charming Shoppes, Inc. v. Party Night, Inc., c/o Peter Carrington, WIPO Case No. D2003-0173; Dr. Ing. h.c. F. Porsche AG v. Domains by Proxy, Inc. and Vladimir Putinov, WIPO Case No. D2004-0311; Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/k/a Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330; Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362; Nokia Corporation v. Horoshiy, Inc., LaPorte Holdings, WIPO Case No. D2004-0851; PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696).

In the light of the above and of the fact that the addition of the gTLD “.com” has no legal significance when comparing the Domain Name and the Complainant’s trademark (The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859), the Panel finds that this element has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out in particular but without limitation three circumstances which, if proved by the Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii), namely:

(i) before any notice of the dispute to the Respondent, the Respondent’s use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or

(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name, stressing that the Respondent: (i) is not, and never has been, a representative or licensee of the Complainant, nor is otherwise authorized to use the Complainant’s marks; (ii) there is no indication of the Domain Name being used in connection with a bona fide offering of goods and services or of the Respondent’s making or intending to make a legitimate non-commercial or fair use of the Domain Name according to paragraphs 4(c)(i) and 4(c)(iii) of the Policy; (iii) on the contrary, the Respondent appears to have been making an illegitimate use of the Domain Name for commercial gain by displaying on its web page some sponsored links to other commercial websites; (iv) there is no indication that the Respondent was known by the Domain Name according to paragraph 4(c)(ii) of the Policy.

In light of the above, the Complainant has established prima facie evidence that none of the three circumstances establishing legitimate interests or rights mentioned above applies. As stressed by many WIPO UDRP decisions, in such a case the burden of proof shifts on the respondent to rebut the evidence (see among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).

By not submitting a response, the Respondent has failed to invoke any circumstance under paragraph 4(c) of the Policy, which can demonstrate any rights or legitimate interests in the Domain Name (Spadel S.A v. Peter Kisters, WIPO Case No. D2000-0526; Deutsche Bank AG v. Diego-Arturo Bruckner, WIPO Case No. D2000-0277; Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).

The Panel therefore finds that the Respondent has no rights and/or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

Based on the Complaint and the supporting evidence attached thereto, the Panel accepts that the Complainant’s trademark T-MOBILE has been widely used to identify mobile communications services offered by the Complainant and has acquired worldwide reputation.

As explained above, the Domain Name is confusingly similar with the Complainant’s trademark and the Respondent has no rights or legitimate interests in the Domain Name. It is very unlikely that the Respondent, at the time it registered the Domain Name, was not aware that it was infringing the Complainant’s trademark (see Nokia, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397). Based on the above, the Panel agrees that Respondent registered the Domain Name in bad faith.

In the Panel’s opinion, the Respondent has been using the Domain Name in bad faith for the purpose of attracting, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to its source, sponsorship, affiliation or endorsement, as stated in paragraph 4(b)(iv) of the Policy.

Such an opinion is reinforced by the fact that the Respondent’s website contained some sponsored links which allowed it to collect a financial remuneration proportional to the number of connections.

For the foregoing reasons, the Panel concludes that the third element under paragraph 4(a) of the Policy has also been established.

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, <tmobilephonedeals.com>, be transferred to the Complainant.

Anna Carabelli
Sole Panelist

Dated: June 30, 2005