WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Deutsche Telekom AG v. Siraj Nayee

Case No. D2012-1148

1. The Parties

Complainant is Deutsche Telekom AG of Bonn, Germany, represented by Hogan Lovells International LLP, Germany.

Respondent is Siraj Nayee of Buford, Georgia, United States of America.

2. The Domain Names and Registrar

The disputed domain names <tmobileoffer.com>, <tmobileoffers.info>, <tmobileoffers.net>, <tmobileoffers.org>, and <tmobileunlimitedplan.com> are registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 5, 2012. On June 5, 2012, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain names. On June 6, 2012, eNom transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on June 14, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 4, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 5, 2012.

The Center appointed Ross Carson as the sole panelist in this matter on July 9, 2012. 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 Europe’s largest telecommunications company. Complainant’s business covers the entire spectrum of modern telecommunications and is one of the few telecommunications companies in the world to offer genuinely integrated solutions from a single source.

Complainant has established presence in the major economic centres 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. Complainant’s mobile communications division “T-Mobile” is one of the top three mobile telephone providers in the world. “T-Mobile” offers all digital voice, messaging and high-speed data services to more than 129 million customers worldwide, with about 33 million customers in the United States.

The name and trademark T-MOBILE is well-known and relied upon as identifying Complainant. “T-Mobile” is the business name under which Complainant’s business in the mobile communications sector is conducted. Complainant is the registered owner of dozens of registered trademarks in the United States and abroad for or including T-MOBILE registered in a multitude of International Classes. In particular, Complainant is the owner of the trademark T-MOBILE registered on the principal register as United States Registration No. 2282432 on October 5, 1999 in relation to goods and services in International Classes 9, 14, 16, 18, 25, 28, 36, 37, 38, and 41. The goods in International Class 9 include a broad range of telecommunications equipment including interactive communication devices. The services in International Class 38 include telecommunication services including electric, digital, cellular and wireless transmission and reception of voice, data, information, images, signals and messages.

Complainant has registered and uses, among others, the domain names <t-mobile.com>, <t-mobile.org>, and < t-mobile.net>. The domain names <t-mobile.com> and <t-mobile.org> have been registered for over a decade while the domain name <t-mobile.net > has been registered for over six years.

The disputed domain names were all created in either October or November of 2011.

5. Parties’ Contentions

A. Complainant

A.1. Identical or Confusingly Similar

Complainant states that it has registered a large number of national, Community and international trademarks reflecting the term “T-Mobile”, including, inter alia, United States trademarks No. 2911878 and No. 2282432, International Registrations No. 680034 and No. 864393 and European Community trademark No. 485441. As stated in Section 4 immediately above, Complainant is the owner of the trademark T-MOBILE registered on the principal register as United States Registration No. 2282432 on October 5, 1999 in relation to goods and services in International Classes 9, 14, 16, 18, 25, 28, 36, 37, 38, and 41. The goods in International Class 9 include a broad range of telecommunications equipment including interactive communication devices. The services in International Class 38 include telecommunication services including electric, digital, cellular and wireless transmission and reception of voice, data, information, images, signals and messages.

Complainant submits that the disputed domain names <tmobileoffer.com>, <tmobileoffers.info>, <tmobileoffers.net>, <tmobileoffers.org> and <tmobileunlimitedplan.com> all contain Complainant’s famous T-MOBILE trademark almost identically. The fact that the disputed domain names do not contain a hyphen between the letter “t” and the word “mobile” has no effect in this case, since “[t]he deletion or addition of one letter (here a hyphen) is an insignificant change for the purposes of Policy paragraph 4(a)(i).” Toilets.com, Inc. v. Port-A-John, WIPO Case No. D2007-1497 (citing Universal City Studios, Inc. v. HarperStephens, WIPO Case No. D2000-0716)

Complainant further submits that the term “tmobile”, which is almost identical to Complainant’s famous trademark T-MOBILE, is the dominant and distinctive component of all the disputed domain names. The fact that a domain name incorporates Complainant’s famous T-MOBILE trademark almost identically has already been held by previous UDRP panels to be sufficient to establish that the domain name is confusingly similar to Complainant’s registered trademark T-MOBILE. See Deutsche Telekom AG v. Philip Seldon/RegTek Whois Envoy, WIPO Case No. D2007-0674, where the panel found: “[...], in devising the domain names the Respondent has taken the entirety of the T-MOBILE mark and merely added to it a generic and common expression, [...]. It has been held in many UDRP proceedings that doing so does not diminish the otherwise confusing similarity between a domain name and a trademark, for Internet users will simply assume that the generic or common expression relates to the Complainant and not to anyone else.” See also Deutsche Telekom AG v. Spiral Matrix, WIPO Case No. D2005-1145, where the panel found: “[...] the Panel agrees with Complainant’s view that the addition of the terms ‘pictures’, ‘us’, ‘text messages’, ‘rebates’ and/or ‘prepaidcard’ to the trademark T-MOBILE are likely to lead internet users to the assumption that the domain names might be connected to the Complainant’s subsidiary T-Mobile.”

Complainant further submits that the addition of the generic terms “offer”, “offers” and “unlimitedplan”, respectively, does not prevent the disputed domain names from being confusingly similar to Complainant’s trademarks. Due to the tremendous reputation of the trademark T-MOBILE, the term “tmobile” is considered by the public as the dominant component of the disputed domain names, while the terms “offer”, “offers” and “unlimitedplan” are mere descriptive additions. The public interprets the terms “offer”, “offers” and “unlimitedplan” as a description of the respective website’s content. Therefore, the addition of the generic terms “offer”, “offers” and “unlimitedplan” is not sufficient to exclude a likelihood of confusion. This conclusion is in line with what previous UDRP panels already held. See 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, where the panel found that “[t]he mere addition of common terms such as ‘sports’, ‘basketball’, ‘soccer’, ‘volleyball’, ‘rugby’ and the like to the ‘PEPSI’ mark, does not change the overall impression of the designations as being a domain names connected to the Complainant.” See also Nokia Corporation v. Horoshiy, Inc., LaPorte Holdings, WIPO Case No. D2004-0851, where the panel stated: “[a]dding 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 expressed repeatedly by other panels […].”

Complainant states that the public will expect to connect to official websites of Complainant under the disputed domain names <tmobileoffer.com>, <tmobileoffers.info>, <tmobileoffers.net>, <tmobileoffers.org> and <tmobileunlimitedplan.com> on which Complainant provides information on its “T-Mobile” offers and mobile phone plans, respectively. The combination of the element “tmobile” with the generic terms “offer”, “offers” and “unlimitedplan” will therefore rather increase than exclude the likelihood of confusion between the disputed domain names and Complainant’s trademark T-MOBILE.

Complainant further submits that the fact that the disputed domain names have a different capitalization in comparison to Complainant’s trademark T-MOBILE has no effect, since “the distinction does not change the likelihood of confusion.” (BIC Deutschland GmbH & Co KG v. Paul Tweed, WIPO Case No. D2000-0418)

A.2. No Rights or Legitimate Interests in respect of the Disputed Domain Names

Complainant submits that it has established rights in its trademarks for or including T-MOBILE and has not licensed or authorized Respondent to use its trademarks in association with a business or as part of the disputed domain names.

Complainant states that the disputed domain name <tmobileoffer.com> was previously used for a website that imitated the look and feel of the official T-mobile websites. On this website, which was not authorized by Complainant, Respondent offered T-mobile plans. Since Respondent is not an authorized dealer or licensee of Complainant, it is obvious that Respondent was trying to confuse Internet users into thinking that the website under the disputed domain name was an official website of Complainant and was thus trying to take profit of Complainant’s famous T-MOBILE trademark.

In the meantime, the website that could before be accessed under the disputed domain name <tmobileoffer.com> was disconnected by Respondent. Presently, Respondent does not actively use the disputed domain name <tmobileoffer.com> as well as the disputed domain names <tmobileoffers.info> and <tmobileunlimitedplan.com> to operate a website.

The disputed domain names <tmobileoffers.net> and <tmobileoffers.org> are currently used for websites with sponsored links relating to the telecommunications sector.

Based on the above noted facts relating to the use and non-use of the disputed domain names, Complainant submits that Respondent does not show any rights or legitimate interests in the disputed domain names. In particular, none of the circumstances listed under paragraph 4(c) of the Policy, which demonstrate rights or legitimate interest exist. Respondent does not use any of the disputed domain names for a bona fide offering of goods or services and there is no indication that Respondent was commonly known by the disputed domain names. Further, Respondent is not making a legitimate non-commercial or fair use of the disputed domain names.

Complainant submits that it has made a prima facie case showing that Respondent does not have any rights or legitimate interests in the disputed domain names. Thus, the evidentiary burden to show his rights or legitimate interests in the disputed domain names is on Respondent, as stated in several WIPO UDRP cases: “A number of WIPO cases have established that, by virtue of paragraph 4(c) of the Policy, once a Complainant establishes a prima facie case that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent.” Deutsche Telekom AG v. Britt Cordon, WIPO Case No. D2004-0487.

A.3. Registration in Bad Faith

Complainant submits that its trademark T-MOBILE had been registered for many years by the time of the registration of the disputed domain names occurred on October 5, 2011 and November 1, 2011, respectively. Complainant’s mobile communications division “T-Mobile” is one of the world’s leading mobile telephone providers with more than 129 million customers worldwide and about 33 million customers in the United States. Accordingly, Complainant and its T-MOBILE trademark were well-known on a worldwide basis and especially in the United States prior to registration of the disputed domain names.

Complainant further submits that given the fame of Complainant’s T-MOBILE trademark and the use of the almost identical term “tmobile” in the disputed domain names, Respondent certainly knew about Complainant’s T-MOBILE trademarks and business name when registering the disputed domain names. In fact, seeing that one of the disputed domain names has been used by Respondent for a forged “T-Mobile” website, it can be assumed that the disputed domain names have only been registered by Respondent in order to benefit from the reputation of the famous T-MOBILE trademarks of Complainant. Therefore, it is evident that the disputed domain names have been registered in bad faith. The question of bad faith at the time of registration has often been the subject of UDRP panel decisions. See, British Sky Broadcasting Group plc, v. Mr. Pablo Merino and Sky Services S.A., WIPO Case No. D2004-0131 where the panel found: “It is reasonable to conclude that only someone who was familiar with the Complainant’s mark would have registered identical domain names. As Complainant’s trademarks are famous in wide parts of the world, this suggestion proves true in particular. See PepsiCo, Inc. v. Paul J. Swider, WIPO Case No. D2002-0561, where the panel stated: “Respondent’s registration, without authorization, of a domain name that is identical to Complainant’s famous […] mark and […] trade name is in and of itself evidence of bad faith.” See also Deutsche Telekom AG v. Britt Cordon, WIPO Case No. D2004-0487 where the panel found: “The knowledge of marks at the time of registration of the domain name suggests bad faith.”

A.4. Use in Bad Faith

Complainant submits that the disputed domain name <tmobileoffer.com> was registered using the private registration service “WhoisGuard” of the Registrar’s reseller NameCheap, which allowed the true owner of the disputed domain name not to have his actual contact details shown in the WhoIs record. The contact details of Respondent have only been disclosed after Complainant brought the trademark infringement caused by the registration of <tmobileoffer.com> to NameCheap’s attention and requested NameCheap to disclose the contact details of the true registrant.

When Complainant became aware of the registration of the disputed domain name, Complainant’s authorized representatives sent a letter to the privacy service provider WhoisGuard/NameCheap and asked for the disclosure of the underlying registrant. With its email of May 23, 2012, the provider NameCheap informed Complainant’s authorized representatives that the underlying registrant is Siraj Nayee located in Buford, Georgia, United States. The use of a private registration service, especially for the registration of a domain name that contains a protected trademark, is already in itself an indication of bad faith. Previous UDRP panels have also held that the use of a privacy service when registering a domain name can be an indication for bad faith. See The Saul Zaentz Company d/b/a Tolkein Enterprises v. Eurobox Ltd. / “The Saul Zaentz Company”, WIPO Case No. D2008-0156, where the panel found: “Indeed, the use of a proxy service would more usually (although not necessarily always) be indicative that the Respondent is seeking to hide its activity from scrutiny in proceedings under the Policy. The natural inference from this is a negative one – that the Respondent has ‘something to hide.’”

The use of the private registration service also made it more difficult for Complainant to ascertain whether Respondent had registered any further domain names containing any of Complainant’s trademarks. Only after the registrant details had been disclosed to Complainant’s authorized representatives by NameCheap, was Complainant able to conduct a reverse WhoIs search for “Siraj Nayee” and find out that Respondent had registered another four disputed domain names that contain the element “tmobile”. This also shows that Respondent used the private registration service WhoisGuard in order to impede Complainant’s assertion of its trademark rights and thus acted in bad faith.

Complainant further submits that the disputed domain name <tmobileoffer.com> is also currently being used in bad faith. Presently, there is no active use of the disputed domain name <tmobileoffer.com>. Previously, however, Respondent used the disputed domain name <tmobileoffer.com> for a forged “T-Mobile” website on which he offered “T-Mobile” plans.

Given the fact that Respondent had knowledge of Complainant’s trademarks and domain names when acquiring and using the disputed domain name, it is obvious that Respondent registered the disputed domain name with a view to creating a likelihood of confusion with Complainant’s T-MOBILE trademark to obtain financial gain from the registration and use of the disputed domain name. By using the disputed domain name <tmobileoffer.com> in the described way, Respondent was taking unfair advantage of the reputation of Complainant’s T-MOBILE trademark. Thus, Respondent was using the disputed domain name in bad faith.

The bad faith intentions of Respondent when registering and using the disputed domain name <tmobileoffer.com> are also shown by the investigations that Complainant had carried out with regard to Respondent’s activities through the website at <tmobileoffer.com>. Complainant had an investigator purchase products from the website at “www.tmobileoffer.com”. The investigator’s purchase transaction, using a credit card, was processed and payment was made to the entity behind <tmobileoffer.com>. To date, the investigator has not received any of the purchased goods. The investigator therefore followed up with the <tmobileoffer.com> entity by email on May 9, 2012 inquiring on the status of the order. However, the email could not be delivered to the address from which the investigator had received the confirmation of the purchase order. This shows that Respondent has been using the disputed domain name <tmobileoffer.com> for a fraudulent website, which is a clear indication of bad faith on the part of Respondent.

In the meantime, Respondent has disconnected the website that could previously be accessed under <tmobileoffer.com> after having been contacted by Complainant with regard to the unlawful registration of the disputed domain name <tmobileoffer.com>.

Complainant further states that its authorized representatives sent a cease and desist letter to Respondent through the WhoisGuard privacy service via the address and fax number provided in the WhoIs database for the disputed domain name on May 14, 2012, requesting Respondent to transfer the disputed domain name to Complainant. On May 21, 2012, Complainant’s authorized representatives sent a reminder letter to Respondent to the same address and fax number.

After having received the true contact details of Respondent from NameCheap, Complainant’s authorized representatives re-sent the cease and desist letter to Respondent on May 23, 2012. With his email of May 29, 2012, Respondent informed Complainant’s authorized representatives that the website that was previously accessible at <tmobileoffer.com> had been disconnected.

However, despite Complainant’s request to cancel the disputed domain name registration for <tmobileoffer.com> and thus to stop the trademark infringement caused by the registration of the disputed domain name, Respondent neither cancelled his registration of the disputed domain name nor made any attempts to transfer the disputed domain name to Complainant. Thus, although having been notified of the unlawfulness of his disputed domain name registration for <tmobileoffer.com>, Respondent has not cancelled the disputed domain name registration for <tmobileoffer.com> or for any of the other disputed domain names containing Complainant’s T-MOBILE trademark.

Complainant also submits that he disputed domain names <tmobileoffers.net> and <tmobileoffers.org> are also being used in bad faith by Respondent.

According to paragraph 4(b)(iv) of the Policy it shall be evidence of registration and the use of a domain name in bad faith if by using the disputed domain names Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other online location, by creating a likelihood of confusion with Complainant’s mark. This is because the consumers should be protected by avoiding the risk of confusion and association that usually leads to unfair competition by using another’s trademark and obtaining a profit.

Since the disputed domain names <tmobileoffers.net> and <tmobileoffers.org> are confusingly similar to Complainant’s T-MOBILE trademark and are used for websites that contain sponsored links, it is evident that Respondent is trying to attract Internet users by creating a likelihood of confusion with Complainant’s famous T-MOBILE trademark. Respondent is obviously well aware that it is very likely that Internet users looking for official information about T-Mobile goods or services will be misled to Respondent’s websites. With respect to the disputed domain names <mobileoffers.net> and <tmobileoffers.org>, Respondent is trading on the goodwill of Complainant and free-riding on the recognition that Complainant’s trademark T-MOBILE enjoys among Complainant’s customers.

Previous UDRP panels have held in similar cases that the use of a domain name for sponsored links, which offer a revenue program which pays a respondent, shall be evidence for bad faith. See Laramar Group, L.L.C. v. XC2, WIPO Case No. Case No. D2006-0617, where the panel found: “In many previous UDRP decisions […] such exploitation of trademarks to obtain click-through commissions from the diversion of internet users was held of use in bad faith.” (citing Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584)

Complainant states that presently, there is no active use of the disputed domain names <tmobileoffers.info> and <tmobileunlimitedplan.com>. Nevertheless, in the Telstra case (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003), the panel has set out convincingly that the provisions in paragraph 4(b) of the Policy supports the assumption that passive use can also be of bad faith.

In the Telstra case the panel stated: “[…] inaction is within the concept. That is to say, it is possible in certain circumstances for inactivity by the Respondent to amount to the domain name being used in bad faith […] The question that then arises is what circumstances of the inaction (passive holding) […] can constitute a domain name being used in bad faith? This question cannot be answered in the abstract; the question can only be answered in respect of the particular facts of a specific case.”

Complainant further states that it is the prevailing view of UDRP panels that paragraph 4(b) of the Policy is not limitative, but that there is a general notion of use in bad faith. See Atlantic Recording Corporation v. Paelle International, WIPO Case No. D2001-0065, where the panel found: “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.”

Complainant further submits that in evaluation of all the circumstances in this case the conclusion has to be drawn that Respondent (passively) uses the disputed domain names <tmobileoffers.info> and <tmobileunlimitedplan.com> in bad faith.

Firstly, Respondent registered several domain names with the element “tmobile”, which indicates that Respondent is engaged in a pattern of systematic cybersquatting.

Secondly, seeing the previous use of the disputed domain name <tmobileoffer.com> and the present use of <tmobileoffers.net> and <tmobileoffers.org> for websites with sponsored links, it is to be feared that Respondent will also use the disputed domain names <tmobileoffers.info> and <tmobileunlimitedplan.com> for forged and fraudulent “T-Mobile” websites or for advertisement websites and thus take profit of the fame of Complainant’s T-MOBILE trademark by redirecting Internet users to his websites.

Complainant further submits that Respondent has failed to provide any evidence whatsoever of any actual or contemplated good faith use of the disputed domain names. Therefore, the fact that all the disputed domain names are still registered in Respondent’s name is an indication of the bad faith use of the disputed domain names.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

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

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain names should be cancelled or transferred:

(i) the disputed domain names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

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

(iii) the disputed domain names have been registered and are being used in bad faith.

The fact that Respondent did not submit a Response does not automatically result in a decision in favor of Complainant. The failure of Respondent to file a Response results in the Panel drawing certain inferences from Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. See Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trademark and secondly that the disputed domain names are identical to or confusingly similar to the trademark in which Complainant has rights.

Complainant is the owner of numerous trademark registrations for or including T-MOBILE. It has registered a large number of national, Community and international trademarks for and including T-MOBILE including, inter alia, United States Trademarks No. 2911878 and No. 2282432, International Registrations No. 680034 and No. 864393 and European Community Trademark No. 485441. As stated in Section 4 immediately above, Complainant is the owner of the trademark T-MOBILE registered on the principal register as United States Registration No. 2282432 on October 5, 1999 in relation to goods and services in International Classes 9, 14, 16, 18, 25, 28, 36, 37, 38, and 41. The goods in International Class 9 include a broad range of telecommunications equipment including interactive communication devices. The services in International Class 38 include telecommunication services including electric, digital, cellular and wireless transmission and reception of voice, data, information, images, signals and messages.

The disputed domain names <tmobileoffer.com>, <tmobileoffers.info>, <tmobileoffers.net>, <tmobileoffers.org> and <tmobileunlimitedplan.com> all include the term “tmobile” which is substantially identical to Complainant’s trademark T-MOBILE with the exception of the hyphen which is part of Complainant’s T-MOBILE trademark. The term “tmobile” is pronounced identically to T-MOBILE. The fact that the disputed domain names do not contain a hyphen between the letter “t” and the word “mobile” has no effect in this case, since “[t]he deletion or addition of one letter (here a hyphen) is an insignificant change for the purposes of Policy paragraph 4(a)(i).” Toilets.com, Inc. v. Port-A-John, WIPO Case No. D2007-1497 (citing Universal City Studios, Inc. v. Harper Stephens, WIPO Case No. D2000-0716)

A domain name is confusingly similar to a trademark when it includes the trademark in its entirety, even if one or more generic terms are added in the domain name. The term “tmobile”, which is almost identical to Complainant’s famous trademark T-MOBILE, is the dominant and distinctive component of all the disputed domain names. The fact that a domain name incorporates Complainant’s famous T-MOBILE trademark almost identically has already been held by previous UDRP panels to be sufficient to establish that the domain name is confusingly similar to Complainant’s registered trademark T-MOBILE. See Deutsche Telekom AG v. Philip Seldon/RegTek Whois Envoy, WIPO Case No. D2007-0674, where the panel found: “[...], in devising the domain names the Respondent has taken the entirety of the T-MOBILE mark and merely added to it a generic and common expression, [...]. It has been held in many UDRP proceedings that doing so does not diminish the otherwise confusing similarity between a domain name and a trademark, for Internet users will simply assume that the generic or common expression relates to the Complainant and not to anyone else.” See also Deutsche Telekom AG v. Spiral Matrix, WIPO Case No. D2005-1145,where the panel found : “[...] the Panel agrees with Complainant’s view that the addition of the terms ‘pictures’, ‘us’, ‘text messages, ‘rebates’ and/or ‘prepaidcard’ to the trademark T-MOBILE are likely to lead internet users to the assumption that the domain names might be connected to the Complainant’s subsidiary T-Mobile”.

The Panel finds that Complainant has proven on a balance of probabilities that the disputed domain names are confusingly similar to Complainant’s trademarks T-MOBILE.

(i) Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the disputed domain names.

Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainant’s trademarks for or including T-MOBILE.

Complainant has been using its T-MOBILE trademarks since at least 1997 to promote its goods and services. Respondent appears to have registered or acquired the disputed domain names over ten years later when Complainant’s T-MOBILE trademark was well-known in the United States and Europe. Previous UDRP panels have found that in the absence of any license or permission from a complainant to use well-known trademarks, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed. See LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138.

The disputed domain name <tmobileoffer.com> was previously used for a website that imitated the look and feel of the official T-Mobile websites. On this website, which was not authorized by Complainant, Respondent offered T-Mobile plans. Since Respondent is not an authorized dealer or licensee of Complainant, the Panel infers that Respondent was trying to confuse Internet users into thinking that the website under the disputed domain name was an official website of Complainant and was thus trying to profit from Complainant’s famous T-MOBILE trademark. Such use is not a legitimate use.

Given that the disputed domain names <tmobileoffers.net> and <tmobileoffers.org> that are confusingly similar to Complainant’s T-MOBILE trademark are being used for websites that contain sponsored links related to the telecommunications sector, it is evident that Respondent is trying to attract Internet users by creating a likelihood of confusion with Complainant’s famous T-MOBILE trademark. There is no evidence that before any notice of the dispute Respondent used or made demonstrable preparations to use the disputed domain names <tmobileoffers.info> and <tmobileunlimitedplan.com> which are passively held, in connection with a bona fide offering of goods or services.

Complainant contends that it has found no evidence that Respondent is known by Complainant’s trademarks or has registered or used the disputed domain names as a trademark, and is not aware that he is known by the disputed domain names. See Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020 (no legitimate interest where a registrant has not been licensed by complainant, has not registered or used domain name as a trademark, and has not been known by domain name); See also Ronson Plc v. Unimetal Sanayi ve Tic.A.S., WIPO Case No. D2000-0011 (no legitimate interest where domain name registrant had not registered or used a domain name as a trademark); See also American Automobile Association, Inc. v. Nevis Domains LLC, WIPO Case No. D2006-0489.

There is no evidence that Respondent is making any legitimate, noncommercial or fair use of the disputed domain names pursuant to paragraph 4(c)(iii) of the Policy. Respondent uses the disputed domain names <tmobileoffers.net> and <tmobileoffers.org> and previously used the disputed domain name <tmobileoffer.com> as a way to confuse Internet users into believing that they are accessing a website that is either sponsored or affiliated with Complainant.

The Panel finds that Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names. It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a domain name. Previous decisions under the UDRP have found it sufficient for a complainant to make a prima facie showing that a respondent does not have any rights or legitimate interests in a domain name. Once this showing is made, the evidentiary burden shifts to the respondent to demonstrate its rights or legitimate interests in the domain name. See Deutsche Telekom AG v. Britt Cordon, WIPO Case No. D2004-0487 where the panel stated “A number of WIPO cases have established that, by virtue of paragraph 4(c) of the Policy, once a Complainant establishes a prima facie case that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent.” In this case, Respondent was given the opportunity by way of reply to demonstrate any rights or legitimate interests in the disputed domain names pursuant to paragraph 4(c) of the Policy. However, Respondent did not file a Response nor avail himself of the benefits of paragraph 4(c) of the Policy.

Under the circumstances, the Panel finds that Complainant has proven on a balance of probabilities that Respondent does not have any rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(a)(iii) of the Policy, Complainant must prove that the disputed domain names have been registered and are being used in bad faith.

C.1. Registered in Bad Faith

When the disputed domain names were registered in either October or November of 2011, Complainant’s T-MOBILE trademarks had been registered around the world for over a decade in relation to goods and services including many International Classes for electronic goods and services. Complainant’s mobile communications division “T-Mobile” is one of the world’s leading mobile telephone providers with more than 129 million customers worldwide and about 33 million customers in the United States. Accordingly, Complainant and its T-MOBILE trademark are well-known on a worldwide basis and especially in the United States prior to registration of the disputed domain names.

In addition to the fact that Complainant’s trademark T-MOBILE was well-known prior to the date of registration of the disputed domain names, given that the website linked to the disputed domain name <tmobileoffer.com> had the look and feel of Complainant’s T-MOBILE website, it can be inferred that the disputed domain names have only been registered by Respondent in order to benefit from the reputation of the famous T-MOBILE trademarks of Complainant. The question of bad faith at the time of registration has often been the subject of UDRP decisions. See British Sky Broadcasting Group plc, v. Mr. Pablo Merino and Sky Services S.A., WIPO Case No. D2004-0131 where the panel found: “It is reasonable to conclude that only someone who was familiar with the Complainant’s mark would have registered identical domain names.” As Complainant’s trademarks are famous in wide parts of the world, this suggestion proves true in particular. See also PepsiCo, Inc. v. Paul J. Swider, WIPO Case No. D2002-0561, where the panel stated: “Respondent’s registration, without authorization, of a domain name that is identical to Complainant’s famous […] mark and […] trade name is in and of itself evidence of bad faith.” See also, Deutsche Telekom AG v. Britt Cordon, WIPO Case No. D2004-0487 where the panel found: “The knowledge of marks at the time of registration of the domain name suggests bad faith.”

The Panel thus finds on a balance of probabilities that Respondent registered or acquired the disputed domain names in bad faith.

C.2. Domain Name Used in Bad Faith

Under paragraph 4(b)(iv) of the Policy, inter alia, the following circumstances shall be evidence of the use and registration of a domain name in bad faith: by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.

The disputed domain names <tmobileoffers.net> and <tmobileoffers.org> which are confusingly similar to Complainant’s T-MOBILE trademark contain links to websites in the mobile phone field. The Panel infers that Respondent is trying to attract Internet users for commercial gain by creating a likelihood of confusion with Complainant’s famous T-MOBILE trademark as Internet users looking for official information about T-Mobile goods or services will be misled to Respondent’s websites. Previous UDRP panels have found in similar cases that the use of a domain name for sponsored links related to the goods or services associated with the trademark, which offer a revenue program which pays respondent, shall be evidence of use in bad faith. See Laramar Group, L.L.C. v. XC2, WIPO Case No. Case No. D2006-0617, where the panel found: “In many previous UDRP decisions […] such exploitation of trademarks to obtain click-through commissions from the diversion of internet users was held of use in bad faith.” (citing Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584)

The Panel thus finds that the disputed domain names <tmobileoffers.net> and <tmobileoffers.org> are being used by Respondent in bad faith.

Prior to receiving a cease and desist letter from Complainant, Respondent used the disputed domain name <tmobileoffer.com> which resolved to a webpage on which Respondent offered Complainant’s T-Mobile plans. After receipt of the cease and desist letter Respondent shut down the website “www.tmobileoffer.com”.

Respondent used the disputed domain name <tmobileoffer.com> in association with a webpage on which he offered “T-Mobile” plans to create a likelihood of confusion with Complainant’s T-MOBILE trademark to obtain financial gain. By using the disputed domain name <tmobileoffer.com> in the described way, Respondent was acting in bad faith. The bad faith intentions of Respondent when registering and using the disputed domain name <tmobileoffer.com> is supported by investigations that Complainant carried out with regard to Respondent’s activities through the website at <tmobileoffer.com>. Complainant had an investigator purchase products from the website at "www.tmobileoffer.com”. The investigator’s purchase transaction, using a credit card, was processed and payment was made to the entity behind <tmobileoffer.com>. To date, the investigator has not received any of the purchased goods. The investigator therefore followed up with the <tmobileoffer.com> entity by email on May 9, 2012 inquiring on the status of the order. However, the email could not be delivered to the address from which the investigator had received the confirmation of the purchase order supporting the inference that Respondent has been using the disputed domain name <tmobileoffer.com> for a fraudulent website, which is a clear indication of bad faith on the part of Respondent.

Also, the fact that the website has been subsequently deactivated does not in the circumstances change the Panel’s finding that Respondent uses the disputed domain name <tmobileoffer.com> in bad faith.

There is no active use of the disputed domain names <tmobileoffers.info> and <tmobileunlimitedplan.com>. Previous UDRP panels have found that non-use of domain names which include well-known trademarks, which if used by a respondent would confuse Internet users into concluding that the website associated with the domain name belonged to the complainant constituted bad faith use under paragraph 4(b) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, where the panel has set out convincingly that the provisions in paragraph 4(b) of the Policy support the assumption that passive use can also be of bad faith. In the Telstra case the panel stated: “[…] inaction is within the concept. That is to say, it is possible in certain circumstances for inactivity by the Respondent to amount to the domain name being used in bad faith […] The question that then arises is what circumstances of the inaction (passive holding) […] can constitute a domain name being used in bad faith? This question cannot be answered in the abstract; the question can only be answered in respect of the particular facts of a specific case.”

It is the prevailing view of UDRP panels that paragraph 4(b) of the Policy is not limitative, but that there is a general notion of use in bad faith. See Atlantic Recording Corporation v. Paelle International, WIPO Case No. D2001-0065, where the panel found: “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.”

Respondent registered five disputed domain names in which the distinctive element is “tmobile”, which is confusingly similar to Complainant’s well-known trademark T-MOBILE. There is no evidence before the Panel that Respondent has any trademarks for TMOBILE or carries on business under the name “tmobile” or offers goods or provides services in association with “tmobile”.

Having regard to the fact that Complainant’s trademark T-MOBILE is well-known, that Respondent is using the disputed domain names <tmobileoffers.net> and <tmobileoffers.org> for websites with sponsored links to mobile phones in bad faith and has used <tmobileoffer.com> for a forged “T-Mobile” website, and that all disputed domain names incorporate the term “tmobile”, the Panel agrees with Complainant that the use by Respondent of the disputed domain names <tmobileoffers.info> and <tmobileunlimitedplan.com> would also constitute use in bad faith.

The Panel thus finds on a balance of probabilities that the disputed domain names <tmobileoffer.com>, <tmobileoffers.info>, <tmobileoffers.net>, <tmobileoffers.org>, and <tmobileunlimitedplan.com> were registered and are being used in bad faith under paragraph 4(b) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <tmobileoffer.com>, <tmobileoffers.info>, <tmobileoffers.net>, <tmobileoffers.org>, and <tmobileunlimitedplan.com> be transferred to Complainant.

Ross Carson
Sole Panelist
Date: July 23, 2012