The Complainant is Deutsche Telekom AG of Bonn, Germany, represented by Bird & Bird LLP, Germany.
The Respondent is Johnny Dangerously of Houston, Texas, United States of America (“United States”).
The disputed domain names <tmobileprepaidphones.com> and <tmobileprepaidplans.com> (the “Disputed Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 2015. On September 25, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On September 25, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 5, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 25, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 28, 2015.
The Center appointed Nick J. Gardner as the sole panelist in this matter on November 11, 2015. 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.
The Complainant is one of Europe’s largest telecommunications companies. It has an 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 markets in Europe and the United States. The Complainant’s mobile communications division trades as “T-Mobile” and is one of the largest mobile telephone providers in the world. T-Mobile offers digital voice, messaging and high-speed data services to more than 151 million customers worldwide.
The Complainant is the registered owner of numerous registered trademarks in the United States and elsewhere for or including T-MOBILE. In particular, the 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 Complainant has registered and uses, among others, the domain names <t-mobile.com>, <t-mobile.org>, and <t-mobile.net>.
On July 28, 2014 the Respondent registered the Disputed Domain Names.
The Disputed Domain Names resolve to websites which offer for sale (generally by means of links to online stores on Amazon or eBay) mobile phones which are prepaid for use on the Complainant’s network. The Respondent is not authorised or licensed by the Complainant.
The Complainant’s case can be summarised as follows.
(a) The Disputed Domain Names are confusingly similar to the T-MOBILE trademarks and the combination thereof with generic terms “mobile”, “prepaid”,” and “phones” or “plans” is insufficient to distinguish the Disputed Domain Names from the Complainant’s trademark.
(b) The Respondent does not have any rights or legitimate interests in the Disputed Domain Names.
(c) The Respondent registered and uses the Disputed Domain Names in bad faith as the websites to which the Disputed Domain Names resolve make use of the Complainant’s T-MOBILE trademark in order to conduct a business which incorrectly gives the impression that it is operated or authorised by the Complainant. Furthermore the Respondent has clearly provided false contact details which is a further indication of bad faith.
The Respondent did not reply to the Complainant’s contentions.
The identity of the Respondent is unclear. The name “Johnny Dangerously” is manifestly likely to be a pseudonym, and the address details provided (“1000 Space Avenue, Houston with no ZIP code) also appear to be fictitious. Given that a Google search for “Space Avenue Houston” does not return any real location of that name the Panel accepts the Complainant’s submission that the Respondent has provided false contact details. The Panel is satisfied that proper notice of this proceeding was provided to whoever the Respondent really is in accordance with the Rules. No delivery was possible to the postal address in question. However the requisite material has also been served electronically to the email addresses provided by the Respondent. The Panel adopts the approach set out in paragraph 4.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) namely, “once the WIPO Center has notified the complaint to the WhoIs-listed contact information (especially where confirmed by the registrar) for the domain name registrant, this would normally satisfy the requirement in paragraph 2(a) of the UDRP Rules to employ reasonably available means calculated to achieve actual notice”. The Panel also agrees with the statement in WIPO Overview 2.0 on this issue that “Panels have also noted that: (i) there are limits to what can reasonably be done by parties and providers to identify an ‘underlying registrant’ in the context of the UDRP, and if WhoIs information is not readily usable for communication purposes in such case the registrant must expect to bear any consequences; and (ii) in cases of ambiguity as to the identity of the proper respondent, what matters in terms of notification obligations under the UDRP Rules is not so much the name that may ‘formally’ appear on the complaint, but that the latter has been duly notified to the reasonably available contact information of the ‘registrant’, whatever its identity.”
Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response.
Paragraph 4(a) of the Policy states that the Complainant must prove each of the three following elements:
i. the Disputed Domain Names are identical to or confusingly similar to a trademark or service mark in which the Complainant has rights;
ii. the Respondent has no rights or legitimate interests in the Disputed Domain Names;
iii. the Disputed Domain Names have been registered and are being used in bad faith.
The Complainant has submitted detailed evidence that it is the owner of numerous trademarks for T-MOBILE.
The Panel holds that the Disputed Domain Names are each confusingly similar to the above trademark. The Disputed Domain Names, as registered by the Respondent, incorporate the T-MOBILE trademark. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy, “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). The differences in the present case are an omission of the hyphen, and the addition of the generic words “prepaid” and “phones” or “plans” and the generic Top-Level Domain “.com”. This omission and these additions do not suffice to negate the similarity between each of the Disputed Domain Names and the Complainant’s T-MOBILE trademark.
Accordingly the Panel finds that the Disputed Domain Names are each confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
Paragraph 4(c) of the Policy non-exhaustively lists three circumstances that may demonstrate a right or legitimate interest in a domain name:
i. before any notice to you of the dispute, your use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
ii. you (as an individual, business or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
iii. you are making a legitimate noncommercial 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.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Names or to use the T-MOBILE trademark. The Complainant has prior rights in the T-MOBILE trademark which precede the Respondent’s registration of the Disputed Domain Names. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Names and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Names (see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish any rights or legitimate interests in the Disputed Domain Names. Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Names and the second condition of paragraph 4(a) of the Policy has been fulfilled.
In the present circumstances the confusingly similar nature of the Disputed Domain Names to the T-MOBILE trademark, and the lack of any explanation from the Respondent as to why it registered the Disputed Domain Names, and the evidence as to how the Disputed Domain Names have been used by the Respondent leads the Panel to conclude the registration and use was in bad faith. In the present case, the Panel concludes that it is inconceivable that the Respondent selected the Disputed Domain Names independently and without knowledge of the Complainant or its products. The Respondent’s actions are clearly part of a business model which involves attracting potential customers who are looking for products or services suitable for use on the Complainant’s network, and then either selling them such products or services or linking them to other sellers of such products or services. This is done in a manner both in terms of the nature of the Disputed Domain Names themselves, and the content of the websites to which they link, that gives the impression this is a business conducted by, or authorised by, the Complainant. As such it is a paradigm example of the conduct referred to in paragraph 4(b)(iv) of the Policy as evidence of bad faith namely “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
Further, the Panel notes the Respondent has not filed a Response and hence has not availed itself of the opportunity to present any case of legitimate use that it might have. The Panel infers that none exists.
As a result the Panel finds that each of the Disputed Domain Names has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
For all 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 <tmobileprepaidphones.com> and <tmobileprepaidplans.com> be transferred to the Complainant.
Nick J. Gardner
Sole Panelist
Date: November 19, 2015