WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Deutsche Telekom AG v. Heihachi Ltd WHOIS-PROTECTION

Case No. D2010-1225

1. The Parties

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

The Respondent is Heihachi Ltd WHOIS-PROTECTION of Panama, Panama.

2. The Domain Name and Registrar

The disputed domain name <tcom-downloads.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 26, 2010. On July 26, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On July 26, 2010, eNom transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on August 2, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 22, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 26, 2010.

The Center appointed Harini Narayanswamy as the sole panelist in this matter on September 3, 2010. 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 is a telecommunication company that uses the trademark T-COM. It has trademark registrations under classes 9,16, 25,35,36,37,38,39,41 and 42 for the T-COM mark. The registration numbers of some of its T-COM marks in Germany are DE30421578 and DE39927025, European Community Trademarks EM01372150, EM0185532 and international registration IR00725860. The Complainant owns the domain names <t-com.net> and t-com.de>.

The disputed domain name <tcom-downloads.com> was registered on October 10, 2009.

5. Parties’ Contentions

A. Complainant

The Complainant states it is one of Europe’s largest telecommunications companies and among the world’s leading telecommunications and information technology entities. The disputed domain name which uses its trademark T-COM, resolves to a website where the Respondent has an embedded link to the Complainant’s official website “www.t-mobile.de”. A pop-up window advertises a fictitious product called “T-Com Cinema Downloads”, giving a false impression that the Respondent’s commercial file sharing platform called ”Firstload” is operating a download portal with the Complainant. Internet users who access the disputed domain name are invited to test this product for fourteen days. The Complainant asserts that by integrating the Complainant’s website into Respondent’s website, the Respondent is using its registered trademarks, the T logo and its slogan “Erleben was verbindet”, bearing German registration numbers DE30758530, DE302008007402 and DE302008050413.

The Complainant requests for the transfer of the disputed domain name on the grounds that: the disputed domain name is confusingly similar to its T-COM mark, as it uses the entire mark except for the hyphen. The addition of the word “downloads” in the disputed domain name does not distinguish the domain name from the mark as the public associates the mark with the Complainant.

The Complainant contends that the Respondent does not have rights or legitimate rights in the disputed domain name as it is not known by that name or uses it for a bona fide offering of goods and services. It does not make any legitimate noncommercial fair use of the disputed domain name but makes unauthorized use of the Complainant’s mark T-COM. The Complainant sent notice on June 23, 2010 and a reminder on June 29, 2010, to which no replies were received from the Respondent.

The Complainant argues that the disputed domain name was registered and used in bad faith, as the Respondent ought to have known of the Complainant’s prior rights in the mark. The Respondent’s website is in German, and therefore the Respondent ought to be a German who would know of the Complainant, as the largest telecom company in Germany. Knowledge of the marks at the time of registration of the disputed domain name suggests bad faith registration, as only a person familiar with the mark could have registered it. The disputed domain name is used in bad faith as the Respondent’s website claims a false association with the Complainant to diverts users to a commercial download portal called “Firstload” and uses the Complainant’s marks and the goodwill associated with the marks for its domain name and its website to promote fake products. Unauthorized exploiting the goodwill of the Complainant’s mark and not responding to letters sent by the Complainant indicate the Respondent’s bad faith.

B. Respondent

The Respondent did not formally reply to the Complainant’s contentions. On August 2, 2010 the Center received an email communication from one of the e-mail addresses to which the Center’s notification of Complaint was sent (as indicated in the Complaint). In that email communication the sender stated “we are just the registrar” and provided an email and a postal address for who it claimed was “the owner of the domain name”. Further to the instructions of the Panel, on October 2, 2010 the Center sent a notice to the contact details provided in that communication by email and courier to enquire whether the recipient had any connection to the domain name and inviting the recipient to reply by October 8, 2010. No communication was received in reply to the Center’s notice.

6. Discussion and Findings

To obtain the remedy of transfer of the disputed domain name, the Policy stipulates that the Complainant has to establish three elements under paragraph 4(a).

(i) The disputed domain name is identical or confusingly similar to a mark in which the Complainant has rights, and

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

(iii) The disputed domain name was registered and is being used in bad faith by the Respondent.

A. Identical or Confusingly Similar

The first element requires the Complainant to prove that the domain name registered by the Respondent is identical or confusingly similar to a mark in which it has rights.

The Complainant has furnished print outs from the trademark database “www.polymark.de” as evidence of its registered T-COM marks. The Panel observes that many of these marks have been filed and granted registration in the year 1999, which is more than a decade before the registration of the disputed domain name. This establishes the fact that the Complainant has used the T-COM mark for a considerable length of time. A trademark registration constitutes prima facie evidence of the validity of trademark rights. See Backstreet Productions, Inc. v. John Zuccarini, CupcakeParty, Cupcake Real Video, Cupcake-Show and Cupcakes-First Patrol, (<backstreeboys.com> et al), WIPO Case No. D2001-0654. The Panel therefore finds that the Complainant has valid and subsisting rights in the T-COM marks.

The disputed domain name uses the Complainant’s mark T-COM, without the hyphen. The Complainant has provided sufficient material that shows its use of the T-COM mark is a distinctive identifier of the Complainant’s products and services. Given the distinctiveness of the mark and the length of use of the mark by the Complainant, the term “tcom”, sans the hyphen, in the disputed domain name, the Panel finds that the disputed domain name can be identified with the Complainant’s T-COM trademark. Therefore the term “tcom” in the disputed domain name is found to be virtually identical to the Complainant’s trademark.

In the disputed domain name, the Respondent has appended a hyphen and the word “downloads” with the Complainant’s mark. The Panel finds that adding the generic word “download” to the Complainant’s mark does not reduce the confusing similarity with the Complainant’s mark, as the mark is the primary identifier of source, and the word “downloads” is merely a generic word. The disputed domain name gets its distinct identity due to the use of the Complainant’s mark and not from the use of the generic word “downloads”. In several previous UDRP cases it was found that the appending of a non-distinctive text, such as “downloads”, to a complainant’s trademark does not distinguish the domain name from a complainant’s registered trademark. See Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434 (<unlimitedwiidownlaods.com>); and Limewire LLC v. David Da Silva / Contactprivacy.com, WIPO Case No. D2007-1168 (<download-limewire-now.com>).

The Panel therefore finds that the disputed domain name is confusingly similar to the T-COM mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The second element under paragraph 4(a) of the Policy requires the Complainant to make a primafacie case that the Respondent lacks rights and legitimate interests in the disputed domain name.

The Complainant has argued that the Respondent has no rights and legitimate interests, as the Respondent is not known by the disputed domain name. The Respondent is not authorized to use its mark, therefore an offering of goods and services by the Respondent using the Complainant’s mark does not constitute a bona fide offering in this case. The Respondent does not make any legitimate noncommercial fair use of the disputed domain name, but makes unauthorized use of the Complainant’s mark T-COM. In short, the Complainant contends that the Respondent does not have a basis for making a defense under paragraph 4(c) of the Policy.

The Respondent has not participated in these proceedings by filing a response to the Complaint or provided any material that can demonstrate any legitimate interests in the disputed domain name or in a name corresponding to the disputed domain name. Further the Panel also notes that the Respondent has not replied to the notices sent by the Complainant. It is for the Panel to draw appropriate inferences from the Respondent’s failure to respond and counter the Complainant’s allegations.

From the material on record, it appears that the Respondent’s website facilitates file sharing activity and offers downloads, but uses the Complainant’s mark for these activities. The use of the Complainant’s mark in the disputed domain name and the embedded link on the Respondent’s website, falsely suggests to unsuspecting users that the Complainant is offering or facilitating these downloads. The use of a confusingly similar domain name that resolves to a website that provides an unauthorized link to the Complainant website gives a false impression of affiliation with the Complainant. This does not constitute legitimate rights. See, for instance, Pfizer Inc. v. Schreiner/Schreiner & Co., WIPO Case No. D2004-0731.

The significant words in paragraph 4(c)(i) of the Policy are “bona fide offering”, as opposed to a mere offering of goods and services. A bona fide offering implies use of the domain name by an honest adopter of the name. See FINAXA Societe Anonymev. Vitalie Popa, WIPO Case No. D2004-0873. The Complainant has asserted that it has not authorized or licensed the Respondent to use its marks or to promote any products using its marks. As the Respondent is not connected with the Complainant, the use of the Complainant’s mark in the disputed domain name is likely to confuses users to falsely believe that the Respondent’s website is being operated or endorsed by the Complainant. Such an activity is not a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. See RapidShare AG and Christian Schmid v. rapidsharedvd, WIPO Case No. D2010-0616.

The Panel finds, for the reasons discussed, the Complainant has made established the second element of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The third element under the paragraph 4(a) of the Policy requires the Complainant to prove that the disputed domain name has been registered and used in bad faith.

The Complainant has argued the Respondent has knowledge of the Complainant’s marks and has registered the disputed domain name in bad faith for three main reasons. First, because the Complainant has prior rights in the T-COM mark. Second, the Respondent’s website is in German, and a German ought to have knowledge of the Complainant’s marks. Third, the Respondent has an unauthorized link to the Complainant’s website that displays the Complainant’s registered trademarks.

In the present case, the Panel finds the arguments regarding bad faith registration made by the Complainant are persuasive. This is because the Complainant has filed credible evidence that establishes its ownership in the T-COM marks and its use of the marks to distinguish its products and services for over a decade. The Respondent has registered a virtually identical copy of the Complainant’s mark and has provided a link to the Complainant’s official website. Given the long and extensive use of the Complainant’s mark and the fact that the Respondent’s website appears to be published in the German language, it is unlikely that the Respondent was unaware of the Complainant’s marks which have a dominant presence in German telecommunications. All these facts and circumstances, in the Panel’s view, suggest that the Respondent must have known of the T-COM marks while registering the disputed domain name.

The most persuasive evidence of Respondent’s knowledge and of targeting the Complainant and its marks, the Panel finds, is the unauthorized link that the Respondent has provided to the Complainant’s site. From the link on the Respondent’s website the Complainant’s registered trademarks, the “T LOGO” and its slogan “Erleben was verbindet” are displayed. This shows the Respondent must have been aware of the Complainant and its ownership of these trademarks including the T-COM mark at all times relevant to this dispute including the time the Respondent registered the disputed domain name. Registration of a domain name, based on awareness of a complainant’s trademark rights, under certain circumstances, is recognized as bad faith registration under the Policy. See Janet ESidewater v. Worldwide Media Inc., WIPO Case No. D2006-1281.

Regarding bad faith use, the Complainant has contended that the disputed domain name resolves to a website where the Respondent has embedded the Complainant’s official website “www.t-mobile.de” using iFrame, which shows a pop-up window that advertises a fictitious product called “T-Com Cinema Downloads”. The Complainant has also asserted that a further indication of the Respondent’s bad faith use is the false claims made by the Respondent that the Complainant (“T-Com”) is operating a download portal in co-operation with its service partner “Firstload” and is therefore trying to divert Internet users to the ”firstload.de” website. The Panel finds that there is no reasonable explanation for such use of the disputed domain name except that the Respondent seeks to exploit the reputation and goodwill of the Complainant’s marks by attracting Internet traffic to the Respondent’s website or to mislead customers to believe that the Complainant is in some way associated with the Respondent’s website.

Given these circumstances, the Panel finds the Respondent has registered the disputed domain name with the intention of attracting Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website. It can be inferred that the Respondent’s registration and use of the disputed domain name <tcom-downloads.com> is with the intention of attracting Internet users for some commercial gain, due to the likelihood of confusion with the Complainant’s trademarks. Such registration and use has been recognized as bad faith registration and use under paragraph 4(b)(iv) of the Policy. See AXA, S.A v. Privacy Protect.org/ Koddos, Ronald LincoWIPO Case No. D2010-0270.

The Panel finds the Complainant has successfully established that the disputed domain name was registered and is 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 name, <tcom-downloads.com> be transferred to the Complainant.

Harini Narayanswamy
Sole Panelist
Dated: October 12, 2010