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Deutsche Telekom AG v. Yong Cho [2005] GENDND 682 (2 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Deutsche Telekom AG v. Yong Cho

Case No. D2005-0415

1. The Parties

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

The Respondent is Yong Cho, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <tmobileonly.com> (the Domain Name) is registered with Melbourne IT Ltd trading as Internet Name Worldwide (the Registrar).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2005. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 27, 2005, the Registrar 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 April 27, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 17, 2005. The Response was filed with the Center on May 15, 2005.

The Center appointed Anna Carabelli as Sole Panelist in this matter on May 19, 2005, indicating that, absent exceptional circumstances, the decision would be due by June 2, 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.deutch-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-G to the Complaint) of registration of the following USA, 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.

- International Reg. No. 00680035 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>, directly or through its subsidiary T-MOBILE USA.

The Respondent registered the Domain Name on December 3, 2004, (Attachment A to the Complaint) and, except for a short period of time following the Complainant’s cease and desist letter, since then it has been using it to offer equipment for mobile phones of different companies on the corresponding website, a fact that is not disputed by the Respondent. The Respondent does not deny receipt of the cease and desist letters sent by the Complainant on December 22, 2004, and on January 12, 2005, (Attachments K and M to the Complaint) nor does he challenge the fact that T-Mobile is also the corporate name under which the Complainant’s business in the mobile communications sector has being conducted worldwide and particularly in the USA where the Respondent resides.

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 communication 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 word “only” to the Complainant’s famous trademark is unable 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 paragraph 4(c)(i) and paragraph 4(c)(iii) of the Policy; and (iii) the Respondent is not known by the Domain Name according to paragraph 4(c)(ii) of the Policy;

- the Domain Name has been registered in bad faith since: (i) when registering it, the Respondent had knowledge of the Complainant’s trademarks and business names, given the worldwide fame of the Complainant’s trademarks; and (ii) the Domain Name was registered in order to mislead the public that the Respondent’s website is connected with or authorized by the Complainant: the addition of the descriptive word “only” to the Complainant’s famous trademark suggests that on the website only the Complainant’s products are offered, which is not the case;

- the Domain Name is being used in bath faith, since the use of the Domain Name for a website which offers mobile phone equipment that is neither produced nor licensed by the Complainant constitutes an improper use of the Complainant’s mark in order to attract Internet users to the Respondent’s site for commercial gain. In this connection the Complainant indicates that on December 22, 2004, it sent a cease and desist letter requiring the Respondent, amongst others, to transfer the Domain Name to the Complainant. The Respondent did not answer this letter although for a short period of time he interrupted the contested use of the Domain Name (which was not directing Internet traffic to any website) but later it recommenced the commercial use of the website.

B. Respondent

The Respondent (offering no evidence in support of its allegations) contends that:

- he registered the Domain Name without any intention to deceive Internet users nor in bad faith;

- he has a right and legitimate interest in the Domain Name since the Domain Name was available and the Respondent was allowed to purchase it;

- the Respondent’s website is construed in a fashion that does not show any intention to marketing or distributing Complainant’s products;

- the Respondent’s website does not try to mislead online visitors into believing that the Respondent is a representative or licensee of the Complainant;

- the Respondent’s website does not offer any equipment or service of the Complainant.

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 right 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” with the addition of the generic word “only”. It is an established principle that the mere addition of a common term or number does not create a different trademark in which Respondent has rights and cannot be considered sufficient to avoid confusion between the Domain Name and 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 & LogisticsCorp, WIPO Case No. D2000-0464; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413).

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 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 has put forward accurate legal reasoning in support of the claim that the Respondent has no legitimate interest in the registration of the Domain Name, stressing the point that the Respondent makes commercial use of the Complainant’s trademark without permission and that the use of the Domain Name which is confusingly similar with the Complainant’s trademark in connection with the promotion and sale of competing products, cannot be regarded as a bona fide offering of goods and services.

In the 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 to 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).

However, the Respondent does not provide evidence of or even invoke, any of the circumstances listed under paragraph 4(c) of the Policy. The Respondent’s claim on this point is based on the mere fact that the Domain Name was available for registration, but obviously this has no legal relevance at all. On the other hand, under paragraph 2 of the Policy: (i) by applying to register a domain name, the registrant represents and warrants, amongst other things that to his/her knowledge the registration of the domain name will not infringe upon or otherwise violate the rights of any third party and that the registration is not for an unlawful purpose and (ii) it is the registrant’s responsibility to determine whether the domain name registration infringes or violates someone else’s rights.

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 is being widely used to identify mobile communications services offered by the Complainant and has acquired a worldwide reputation, facts which are not contested by the Respondent.

As established above, the Domain Name is confusingly similar to 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 he registered the Domain Name, was not aware that he 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 the Respondent has registered the Domain Names in bad faith.

The Respondent admits that the Domain Name is being used for a site that offers equipment for mobile phones which are neither licensed nor produced by the Complainant, but objects that “the website is presented in a fashion that had “no” intention of marketing or distributing Complainant’s products” so that “online visitors would not be mislead by Respondent website”.

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 his 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. Moreover, the addition of the generic word “only” to the Complainant’s trademark suggests that only the Complainant’s products and services are offered. The Respondent, by using the Complainant’s trademark, can derive a potential business opportunity from those who visit the website “www.t-mobileonly.com”, expecting to find the Complainant’s site. Apart from the fact that in the Panel’s opinion the printout of the Respondent’s website (Attachments I and J to the Complaint) does not show any particular effort to differentiate it vis-à-vis the Complainant’s website (Attachment D), the mere fact that users, once so diverted or attracted, are confronted with a website having different graphics, does not cure the initial and illegitimate diversion. This principle has been consistently applied by many WIPO UDRP decisions to cases where a disclaimer was posted on the respondent’s website (see Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698- “Having attracted Internet traffic to his site by trickery, the Respondent cannot resort to disclaimers at the web site, however explicit, […] to clothe the domain name with legitimacy.”; see also Estée Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869) and, in the Panel’s view, all the more applies here.

For the foregoing reasons, the Panel concludes that the third element under paragraph 4(a) 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 <tmobileonly> be transferred to the Complainant.

Anna Carabelli
Sole Panelist

Dated: June 2, 2005