WIPO Domain Name Decision: D2005-1136

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Deutsche Telekom AG v. WWW Enterprise, Inc.

Case No. D2005-1136

1. The Parties

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

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

2. The Domain Names and Registrar

The disputed domain names <t-mobille.net>, <tmobille.net>, <t-onlinecom.com> and <tonlinecom.com> are registered with OnlineNic, Inc. d/b/a China-Channel.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2005. On November 1, 2005, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain names at issue. On November 2, 2005, OnlineNic, Inc. d/b/a China-Channel.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 November 10, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was November 30, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 2, 2005.

The Center appointed Mr. Yukukazu Hanamizu as the Sole Panelist in this matter on December 19, 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.

Due to national holidays in Japan where the panelist resides and practices, the deadline for delivering the administrative panel decision has been extended until January 10, 2006.

4. Factual Background

(i) The Complainant is a major German telecommunications services provider and one of the largest telecommunications companies in the world.

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.

(ii) The Complainant’s subsidiary T-Mobile International AG & Co. KG (“T-Mobile International”) 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 USA, offering all digital voice, messaging and high-speed wireless data services to more than 16.3 million customers.

(iii) Furthermore, the Complainant and its subsidiary T-Online International AG carry on the business of providing Internet and related services. In this sector the Complainant and its products enjoy a world wide reputation with nearly 14 Million customers. In addition to access-providing-services, T-Online offers a broad range of multimedia-services, including free and paid content, web-hosting, email-services, online-banking and international roaming access. Therefore, the public has come to associate the name “T-Online” with the Complainant.

The names “T-Mobile” and “T-Online” are universally recognized and relied upon as identifying the Complainant and its subsidiaries. A true and correct printout of Complainant’s websites under “www.t-mobile.com” and “www.t-online.com” are provided as Annex [C].

(iv) The Complainant has provided evidence of registration of the following national, European Union, United States and International trademarks reflecting:

The mark T-MOBILE (Attachments D, E and F to the Complaint):

- United States 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;

- United States 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;

- European Union 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;

and the mark T-ONLINE (attachments G and H to the Complaint):

- United States Reg. No. 2432440 filed on November 2, 1995, in connection with international classes of goods and services CL. 9, 14, 16, 18, 25, 28, 36, 37, 38, 41, 42;

- International Reg. No. 00650171 filed on January 11, 1996, in connection with international classes of goods and services CL. 9, 16, 36, 37, 38, 41, 42;

- International Reg. No. 00763492 filed on March 14, 2001, in connection with international classes of goods and services CL. 1, 2, 3, 4, 5, 6, 7, 8, 10, 11, 12, 13, 14, 15, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 39, 40;

- International Reg. No. 00653891 filed on January 11, 1996, in connection with international classes of goods and services CL. 9, 16, 36, 37, 38, 41, 42;

- European Union Reg. No. 00214528 filed on April 1, 1996, in connection with international classes of goods and services CL. 9, 16, 36, 37, 38, 41, 42;

- European Union Reg. No. 00214478 filed on April 1, 1996, in connection with international classes of goods and services CL. 9, 16, 36, 37, 38, 41, 42;

- German Reg. No. 39539437 filed on September 27, 1995, in connection with international classes of goods and services CL. 9, 16, 36, 37, 38, 41, 42;

- German Reg. No. 30119032 filed on March 21, 2001, in connection with international classes of goods and services 9, 16, 35, 36, 38, 39, 41, 42.

(v) The Complainant has further provided evidence (Attachment I to the Complaint) of registration of the domain names: <t-online.com>, <t-online.net>, <t-online.org>, <t-online.biz>, <t-online.de>, <tonline.com>, <tonline.net>, <tonline.org>, <tonline.biz>, <tonline.de>, <t-mobile.com>, <t-mobile.net>, <t-mobil.net>, <tmobile.net>, directly or through its subsidiary T-Mobile International.

(vi) The Respondent registered in 2005 the domain names <t-mobille.net>, <tmobille.net>, <t-onlinecom.com>and <tonlinecom.com> (Attachment A to the Complaint).

(vii) Having inserted the respective domain names as URL-addresses, the Internet user is automatically directed to a website which contains sponsored links for various categories, inter alia phones and mobile communication services. Sponsored links are a special form of advertisement that makes the owner of a website gain revenue once an Internet user clicks on these links.

5. Parties’ Contentions

A. Complainant

(1) Confusingly Similar

The Complainant contends that all the Domain Names are confusingly similar to the Complainant’s trademarks “T-MOBILE” or “T-ONLINE”.

(i) The domain names <t-onlinecom.com> and <tonlinecom.com> are confusingly similar to the Complainant’s trademarks T-ONLINE and its Internet services provided under the domain names T(-) ONLINE.DE/.COM/.ORG. The only differences between the said domain names and Complainant’s trademark T-ONLINE are the suffix “com” following the trademark and the fact that the prefix “t” is not hyphenated.

(ii) The domain names <t-mobille.net> and <tmobille.net> differ only in the addition of a second “l” to the Complainant’s registered trademarks “T-MOBILE”. This again is a typical case of “typo-piracy”. It is highly likely that Internet user as a mistake will insert a second “l” when looking for the Complainant’s website under “www.t-mobile.net”.

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. D2000-0119; BIC Deutschland GmbH & Co KG v. Paul Tweed, WIPO Case No. D2000-0418; The Channel Tunnel Group Ltd. v. John Powell, WIPO Case No. D2000-0038).

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 a domain name and the complainant’s trademark (GA Modefine SA v. Riccardo B 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., WIPO Case No. D2003-0173; Dr. Ing. h.c. F. Porsche AG v. Domains by Proxy, Inc., WIPO Case No. D2004-0311; Encyclopedia Britannica, Inc. v. John Zuccarini 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. LaPorte Holdings and, Horoshiy, Inc 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 conclusion, the Complainant’s trademarks are entirely included in the Domain Names succeeded by the generic/country top level domain “com” without a dot or a second “l”. Such elements are commonly used in domain names (although succeeded or preceded by a dot) and therefore do not have any distinguishing capacity.

(2) No legitimate interest

The Respondent does not show any legitimate interest in the use of the disputed Internet domain names. In particular, none of the circumstances listed under 4(c) of the Policy, possibly demonstrating rights or legitimate interests, are given. The domain names do 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” and/or “T(-) Online” prior to registration of the domain names. The Respondent is not authorized or licensed to use the Complainants marks.

(3) Bad faith

The disputed domain names have been registered and are being used in bad faith.

(i) There has been no legitimate use of the domain name by the Respondent. According to a previous WIPO UDRP administrative panel decisions there is no need to determine which of the in paragraph 4 listed hypotheses is applicable in this case:

“Since the hypotheses identified in paragraph 4(b) are not limitative, it is possible to say that Respondent’s inactivity or passive holding of the domain name, may prove that the domain name has been registered and is being used in bad faith.” (WIPO Case No. D2001-0065, Atlantic Recording Corporation v. Paelle International).

The Respondent has had knowledge of the Complainant’s trademarks and business names when he registered the domain names. The Complaint’s trademarks T-MOBILE and T-ONLINE are considered as well-known marks in many markets. According to previous WIPO UDRP administrative panel decisions this is an indication of bad faith registration of a domain name:

“It is highly unlikely that the Respondent has selected the domain name without having knowledge of the Complaint’s use of his marks. He must not only have had the Complaint’s marks in mind when he registered the domain names but he must also have been aware of the deception and confusion that would inevitably follow if he uses the domain”. (WIPO Case No. D2000-0766, Red Bull GmbH v. Harold Gutch; WIPO Case No. D2000-1633, eBay, Inc. v. Sungho Hong d/b/a ebaykorea.com).

“It is inconceivable that the Respondent could make any active use of the disputed domain name without creating a false impression of association with the Complainant. The Respondent was not authorized by the Complainant to use neither its mark nor the disputed domain name”. (WIPO Case No. D2000-1409, Sony Kabushiki Kaisha also trading as Sony corporation v. Inja, Kil).

(ii) Moreover, the Respondent’s mere act of typo-squatting in relation to famous marks presents ample evidence of bad faith (WIPO Case No. D2003-0161, Six Continents Hotels, Inc. v. null John Zuccarini d/b/a Country Walk). As is common with typo-squatters, Respondent is preying on Internet users who misspell famous names such as “T-Mobile”.

“Therefore, the Respondent has engaged in typo-squatting by registering domain names that differ from a well-known domain name only in minor ways that mimic common typing errors by Internet users. This conduct constitutes bad faith conduct in itself” (WIPO Case No. D2000-0323, Neuberger Berman Inc. v. Alfred Jacobsen).

(iii) The disputed domain names are active and point towards a portal website which simply lists various sponsored links. As stressed in Deutsche Telekomn AG v. WWW Enterprise Inc., WIPO Case No. D2004-1078), “it is 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 host of the search engine to collect financial remuneration proportional to the number of connections. Previous panels have established that this practice constitutes bad faith use” (Lowen Corporation d/b/a/ Lowen Sign Company v. Henry Chan, WIPO Case No. D2004-0430; Associazione Radio Maria v. Mr. Hong Hee Dong, WIPO Case No. D2005-0062).

(iv) The Complainant submits that in accordance with the Policy, para 4(b)(iii) the domain name was registered and is being used in bad faith as by using the domain name respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with the complainant’s mark.

Given the high reputation of Complainant’s subsidiaries and brands, “T-Mobile” and “T-Online” in various parts of the world the Respondent must have been aware of Complainant’s trademarks when registering and using the disputed domain names. The Respondent was obviously well aware that it is very likely that Internet users looking for Complainant’s subsidiaries are misled to Respondent’s websites. This is a typical case of “typo-piracy”.

Under the websites that are connected with the Respondent’s domain names there is a list of sponsored links, thereby allowing the Respondent to make commercial gain. Therefore, it is obvious that the Respondent has registered and used the domain names with the intent to attract internet users to his websites that are looking for the products and services of Complainant and thereby making commercial gain by the sponsored links.

Previous panels have held that it was evidence of bad faith if “the Respondent is using the disputed domain name to direct visitors to a search engine that provides sponsored links” (Lowen Corporation d/b/a Lowen Sign Company v. Henry Chan, WIPO Case No. D2004-0430).

B. Respondent

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

6. Discussion and Findings

The Panel notes that the Complainant submitted a “Supplementary Complaint” on December 5, 2005, requesting that 14 additional domain names would be included to the procedure. As this request was submitted only after the Response due date had expired and the addition of such domain names to this proceeding would have required a notification of the Supplementary Complaint to the Respondent and a period of time for the Respondent to submit a Response to such a filing, the Panel rejects the addition of further domain names to the present proceeding in accordance with paragraph 10(a), 10(c) and 12 of the Rules.

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, a Complainant must prove each of the following:

(i) the domain name at 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 a respondent, shall be evidence of that 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 has proven to have acquired trademark right in T-MOBILE and T-ONLINE by virtue of a number of national, European Union, United States and International registrations.

Each of the Domain Names are confusingly similar to the Complainant’s trademarks T-MOBILE’ or T-ONLINE. In particular:

- the only differences between the two domain names <t-onlinecom.com> and <tonlinecom.com> and Complainant’s trademark T-ONLINE are the suffix “com” following the trademark and the fact that the prefix “t” is not hyphenated;

- the only differences between the two domain names <t-mobille.net> and <tmobille.net> and the Complainant’s trademark T-MMOBILE are the addition of a second “l” and the fact that the prefix “t” is not hyphenated;

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. D2000-0119; BIC Deutschland GmbH & Co KG v. Paul Tweed, WIPO Case No. D2000-0418; The Channel Tunnel Group Ltd. v. John Powell, WIPO Case No. D2000-0038).

It has also been consistently affirmed that the mere addition of a generic term such as com as well as slight spelling variations cannot be considered sufficient to avoid confusion between a 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).

As mentioned above, in the case at hand, the Complainant’s trademarks are entirely included in the Domain Names succeeded by the generic top level domain “com” <t-onlincom.com> and <tonlinecom.com> without a dot. Such elements are commonly used in domain names and therefore do not have any distinguishing capacity.

In light of the above, the Panel finds that this element has been established.

B. Rights or Legitimate Interests

In accordance with the Policy, the Complainant has the burden of proof to demonstrate the lack of rights or legitimate interests of the Respondent to the domain names.

However, as stressed by many UDPR decisions, in case a complainant demonstrates a prima facie case of lack of rights under paragraph 4(c) of the Policy, the burden of proof shifts to the respondent to rebut the allegations and evidence provided by the complainant (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).

Paragraph 4(c) of the Policy sets out in particular but without limitation three circumstances which, if proved by a respondent, shall be evidence of that respondent’s rights to or legitimate interests in a 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 Panel finds that the Complainant has demonstrated prima facie that the Respondent lacks rights and legitimate interests to the Domain Names. The Respondent has not filed any submission or evidence to rebut the Complainant’s prima facie case.

There is no evidence before the Panel that the Respondent has any rights or legitimate interests in the Domain Names for the purpose of paragraph 4(a)(ii) of the Policy under the above criteria or otherwise.

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

C. Registered and Used in Bad Faith

The Complainant has shown that its trademarks T-MOBILE and T-ONLINE have been widely used to identify Internet and mobile communications services offered by the Complainant and have acquired a worldwide reputation, and that its subsidiary T-Mobile USA is very active in the United States where it counts more than 19.2 million customers (see the Company Information section dedicated to T-Mobile USA on the Complainant’s website “www.t-mobile.com”) and where the Respondent is based.

As established above, the Domain Names are confusingly similar to the Complainant’s trademarks and the Respondent has no rights or legitimate interests in the Domain Names.

The Panel may therefore reasonably consider that the Respondent was aware of the Complainant’s trademarks at the time when he registered the Domain Names (See Nokia, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397).

The Complainant has also shown that the Domain Names are used in connection with a search engine providing various sponsored links related to different services including telecommunications and Internet services. As stressed in Deutsche Telekon AG v. WWW Enterprise Inc., WIPO Case No. D2004-1078), it is 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 host of the search engine to collect financial remuneration proportional to the number of connections. Previous panels have established that this practice constitutes bad faith use (Lowen Corporation d/b/a/ Lowen Sign Company v. Henry Chan, WIPO Case No. D2004-0430; Associazione Radio Maria v. Mr. Hong Hee Dong, WIPO Case No. D2005-0062).

In addition, the Complainant has provided evidence that the Respondent is the registrant of other domain names containing well-know trademarks and his registration and use of such domain names have been found to be in bad faith (See Air Austral v. WWW Enterprise, Inc, WIPO Case No. D2004-0765 and Deutsche Telekon AG v. WWW Enterprise Inc., WIPO Case No. D2004-1078). In the view of the Panel, this fact and the fact that the Respondent has failed to submit a Response in this proceeding, as well as in the previous ones, fortify the Complainant’s contentions that the Domain Names were registered and are being used in bad faith for the purpose of attracting, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s trademarks.

Based on the above, the Panel finds that the Domain Names have been registered and are being 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 Names, <t-mobille.net>, <tmobille.net>, <t-onlinecom.com>and <tonlinecom.com> shall be transferred to the Complainant.

Yukukazu Hanamizu
Sole Panelist

Dated: January 10, 2006