WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Deutsche Telekom AG v. Vision Computer S.L.

Case No. D2001-1240

Complainant in this proceeding is Deutsche Telekom AG, Friedrich-Ebert-Allee 140, 53113 Bonn, GERMANY.

Respondent is Vision Computer S.L., Viladomat 134, Bajos 2a, 08015 Barcelona, SPAIN.

This dispute concerns the domain names: <t-mobiles.com> and <tmobiles.com>.

The Registrar with which the domain name is registered is: Namesecure.

The WIPO Arbitration and Mediation Center (the Center) received the complaint on October 12, 2001, (electronic version) and October 19, 2001 (Hardcopy). On October 17, 2001, the Center sent a request for registrar verification in connection with this case to Namesecure. The registrar verification response was received on November 5, 2001. The notification of complaint was transmitted on November 6, 2001, and the notification of the respondent’s default on November 27, 2001. On December 4, 2001, the Center received Complainant’s request for suspension of proceedings. The Center granted the suspension of proceedings on January 29, 2002, and extended the suspension of proceedings on February 27, 2002. On March 27, 2002, the re-commencement of proceedings took place. The file was transmitted to the sole Panelist on April 23, 2002.

The complaint is based on the trademark T-Mobile.

Complainant is the owner of the following trademarks:

- In Germany, trademark T-Mobile reg. N° DE39638168 since October 8, 1996

- In the European Union mark T-Mobile reg. N° 000485491 since October 20, 1998

- The International mark T-Mobile reg. N° 680034 since February 26, 1997.

Complainant alleges that Respondent has no right or legitimate interests in the domain name as Respondent is not and has never been a representative or licensee of Complainant nor is otherwise authorized to use Complainant’s trademark, as Respondent is not known under "t-mobiles" or "tmobiles" and as Respondent is not using the domain names for a bona fide offering of goods or services or making a legitimate non-commercial or fair use of them.

Complainant alleges that Respondent has registered and used the domain name in bad faith as Respondent is preventing it from registering the disputed domain names and as Respondent tried to sell the domain names to Complainant and warned it that Respondent could transfer the domain names to any other telecommunication company.

The respondent has not forwarded any response.

a) Identical or Confusing Domain Name

The adding of the single letter "s", the plural ending of Complainant’s trademark, in the domain name <t-mobiles.com> is no distinctive feature. The complainant’s trademark is entirely contained in the domain name. The omission of the "-" spacing sign in the domain name <tmobiles.com> does not decrease the confusing similarity of said domain name with Complainant’s trademark.

b) Respondents Rights or Legitimate Interests in the Domain Names

The respondent defaulting in the present proceedings has not suggested nor adduced evidence for any circumstance giving rise to a right or legitimate interest in the domain name. On the contrary, the domain name is not being used, as the corresponding URL address leads to a blank site. Respondent is therefore not making any legitimate use of the domain name.

c) Domain Name Registered and Used in Bad Faith. Respondent registered 50 domain names on Namesecure registrar. Amongst those are three domain names, <iberia-online.com>, <iberia-online.net> and <dhlonline.net>, reproducing the name of well-known companies, namely Iberia, the Spanish Airline company, and DHL, the courier service. Three other domain names registered by Respondent, <terrabusiness.com>, <menta-online.net> and <guipuzcoanna-online.net>, reproduce the names of important Spanish companies, namely Terra, a famous Spanish Internet Portal, Menta, another Spanish Portal, and Guipuzcoanna, a Transport company. It appears that Respondent has engaged in a pattern of registering domain names reproducing the trademarks or tradenames of others. This is prima facie evidence of bad faith, in the absence of any explanation given by Respondent on the possible grant of a license to it by the holders of those trademarks.

Further, Respondent offered to sell the domain name <t-mobiles.com> to Complainant for 1’000’000 pesetas and the domain names <t-mobiles.com>, <tmobiles.com> as well as domain names corresponding to t-moviles and tmoviles, which Respondent pretended to have registered, for 12’000 Euros. This is also prima facie evidence of bad faith. Indeed the Respondent’s intention to sell a domain name at a price greatly exceeding out of pocket-costs directly relating to the domain name, and making therefore a benefit at the expense of the corresponding trademark owner, clearly shows Respondent's bad faith.

In the light of the foregoing, the Panel decides that the domain names registered by Respondent are confusingly similar to the corresponding trademarks of Complainant, that Respondent has no rights to or legitimate interests in respect of those domain names and that the domain names in issue have been registered and are being used in bad faith by Respondent.

Accordingly the Panel requires that the registration of the domain names <t-mobiles.com> and <tmobiles.com> be transferred to Complainant.