The Complainant is Deutsche Telekom AG, Bonn, the Federal Republic of Germany, represented by Dr Thomas Schafft of Lovells, Munich, Germany.
The Respondent is Ilija Marcovic, Montenegro.
2. The Domain Name and Registrar
The disputed domain name <t-mobilecg.com> is registered with Spot Domain
LLC dba Domainsite.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2006. On September 6, 2006, the Center transmitted by email to Spot Domain LLC a request for registrar verification in connection with the domain name at issue. On September 22, 2006, Spot Domain LLC 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 September 29, 2006. In accordance with the Rules, paragraph 5(a), the due date for the Response was October 19, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 20, 2006.
The Center appointed Wiliam A. Van Caenegem as the
Sole Panelist in this matter on November 9, 2006. 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
The Complainant Deutsche Telekom AG provides GSM mobile communications through its subsidiary T-Mobile International AG & Co. KG. The Complainant’s business name in this sector is ‘T-Mobile’. The Complainant has registered trademarks reflecting the terms ‘T-Mobile’ and ‘T-Mobil’ in various jurisdictions. The Complainant submits that its international trademark T-MOBILE is protected in Montenegro, although the supporting DEMAS printout does not reflect this. In the list of nominated treaty countries, the acronym ‘CZ’ is highlighted, but this designates the Czech Republic. There is reason to believe that there may be some confusion on the Complainant’s part in relation to the acronyms CG (for Crna Gora, i.e. Montenegro in Serbian) and CZ (the acronym for the Czech Republic). Whatever the case may be, the Complainant establishes that it has registered ‘T-Mobile’ as a European Community Trademark (EM00485441) with priority date February 26, 1997 and as a German Trademark (DE39638168) with priority date August 31, 1996. The fact that on its material the Complainant has not clearly established that its international trademark designates Montenegro is of no real consequence, given the fame of the Complainant’s mark in Europe, its European and national trademark registrations in the region, and the fact that the Respondent admits to knowing of the mark and the commercial presence of the Complainant in Montenegro at the relevant time.
Upon demand, the Respondent in correspondence refused
to transfer the domain name to the Complainant, instead proposing inclusion
of a disclaimer. The Complainant communicated its rejection of the Respondent’s
proposal concerning a disclaimer but received no further response. The Center’s
webpage printout of September 28, 2006, establishes that the domain name resolved
to a webpage named Simple Machines Forum, as was still the case when the Panel
accessed the website. Previously, as established by website printouts submitted
by the Complainant, it resolved to RegisterFly.com where domain services and
tools were on offer.
5. Parties’ Contentions
A. Complainant
The Complainant submits that the domain name incorporates the Complainant’s trademark, with the addition of ‘cg’, an abbreviation for “Crna Gora”, or Montenegro in Serbian. This does not result in a legally significant difference.
The Complainant contends that the Respondent has no rights or legitimate interests in the domain name at issue. The Respondent is not making a legitimate non-commercial or fair use of the domain name. The T-MOBILE mark is so well-known that it would have been known to the Respondent at the time of registration of the domain name, and in any case the Respondent implicitly admits this to be the case in his correspondence mentioned above.
The Complainant further contends that the domain name has been registered and used in bad faith, with the Respondent merely concealing the content of the website from some users, and internet users being taken to webpages where internet traffic is intended to result in commercial gain for the Respondent. Moreover the domain name has been offered for sale on “www.internic.de”, and the Complainant submits that selling the domain name is the Respondent’s primary interest.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The domain name incorporates the Complainant’s trademark. The addition of the letters ‘cg’ and the suffix ‘.com’ do not detract from the dominant impression created by the ‘T-mobile’ component on consumers. Consumers would readily assume a connection with the Complainant, an assumption not dispelled by the presence of ‘cg’. Consumers familiar with the ‘CG’ acronym for Montenegro would infer that the domain name reflects nothing more than the trademark owner’s practice of localizing the mark T-MOBILE in a given country.
Therefore the Panel finds that the domain name although not identical is confusingly similar to the registered mark of the Complainant.
B. Rights or Legitimate Interests
The Respondent has not been licensed or authorized to use the trademark at issue by the Complainant. It appears that the domain name has not been used in connection with the offering of bona fide goods or services nor for fair non-commercial purposes. The Respondent asserts in correspondence with the Complainant, which the latter annexed to the Complaint, that given what the Respondent asserts to be the ‘dominant position’ of the Complainant in the mobile telecoms market in Montenegro, the Respondent has a ‘legitimate interest to pursuit behavior’ of the Complainant in Montenegro. However, there is no evidence of such ‘pursuit’ or critical comment having been made on the Respondent’s website or in any other way. In any case, where the domain name itself has not been modified to incorporate disparaging terms (such as ‘xyzsucks’), it has rightly been decided in other cases that it will be difficult for a Respondent to establish a legitimate criticism purpose of use.
Neither the Respondent nor his business is commonly known by the domain name.
Therefore the Panel finds that the Respondent does no have rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
As to registration in bad faith, the domain name incorporates a very well known and distinctive trademark, of which the Respondent would have been aware at the time of registration. An inference of bad faith adhering to the registration of the domain name is inescapable because it is difficult to conceive of any use the Respondent could make of the domain name that would not falsely suggest a connection to the Complainant.
As to use in bad faith, the Complainant submitted material establishing that the domain name was offered for sale at “www.internic.de”. A website printout submitted by the Complainant also establishes that at that time the domain name resolved to “www.registerfly.com”. The Respondent was likely seeking to benefit commercially by occasioning traffic to a domain name registration website, which traffic would result from confusion between the domain name and the Complainant’s mark. The Respondent has since caused the domain name to resolve to a different website, where content is apparently disguised or concealed from some users. This behavior is in the Panel’s view consistent with an underlying purpose on the Respondent’s part of maintaining a presence for the domain name on the Internet while disguising its continuing primary intention to make the domain name available for sale.
Therefore the Panel finds that the registration of the domain name incorporating
the well-known mark and the circumstances of its use, amount to registration
and use 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 name <t-mobilecg.com> be transferred to the Complainant.
WIliam A. Van Caenegem
Sole Panelist
Dated: November 23, 2006
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