The Complainant is Deutsche Telekom AG, Bonn, Germany.
The Respondent is Dexcom Holdings B.V. Rotterdam, Netherlands.
2. The Domain Names and Registrar
The disputed domain names <tmobile.tv> and <tmobil.tv> are registered
with .tv Corporation International.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2006. On January 18, 2006, the Center transmitted by email to .tv Corporation International a request for registrar verification in connection with the domain names at issue. On January 18, 2006, .tv Corporation International 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 February 3, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February 23, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 27, 2006.
The Center appointed Peter Burgstaller as the sole panelist in this matter on March 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.
The language of the administrative proceeding is English.
4. Factual Background
The Panel finds that the Complainant has established the following facts:
The Complainant is one of Europe’s largest telecommunication companies and covers the entire spectrum of modern telecommunications and information technology.
T-Mobile is a subsidiary of the Complainant. T-Mobile is one of the largest mobile communications providers in the world. T-Mobile not only owns several network operators but also holdings of equity capital of telecommunication companies throughout the world.
“T-Mobile” is used by the Complainant as the corporate name under which the business of mobile communication services is conducted. The Complainant owns various trademarks, especially the (word) CTM “T-Mobile”, priority February 26, 1997 for goods and services in classes 9, 14, 16, 18, 25, 28, 36, 37, 38, 41, 42 and the (word) CMT “T-Mobil”, priority April 1, 1996 for goods and services in classes 9, 14, 16, 18, 25, 28, 36, 37, 38, 41, 42 (Annexes 4 and 5).
The Complainant has not granted any license or any other right or permitted the Respondent to use its trademarks.
The Respondent is the registrant of the domain names
in dispute. It has registered the domain names on October 1, 2000. The domain
names at issue are not used for an active website.
5. Parties’ Contentions
A. Complainant
The disputed domain names <tmobile.tv> and <tmobil.tv> are identical, or at least confusingly similar, to the various trademarks owned by the Complainant which all contain the marks “T-Mobile” and “T-Mobil”.
The Respondent has no rights or legitimate interests in respect of the domain names at issue. It does not use these signs in business, has no trademark-registrations or –applications and does not have any licenses or other rights or permissions from the Complainant to use its trademarks.
The domain names in dispute were registered and are being used in bad faith since the Respondent registered <tmobile.tv> and <tmobil.tv> years after the relevant trademark fillings by the Complainant. The Respondent must have been aware of the trademarks “T-Mobile” and “T-Mobil” when registering the domain names at issue, especially because of several trademark-conflicts between the Complainant and the Respondent, because of the fact, that the Respondents’ subsidiary “t for telecom” is a sales partner of “T-Mobile Netherlands” and because of the fact, that the trademarks “T-Mobile” and “T-Mobil” are well known throughout the world.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions.
6. Discussion and Findings
To make out a successful Complaint, it is the Complainant’s burden to prove under paragraph 4(a) of the Policy that
(i) the domain name at issue is identical or confusingly similar to a trade mark or a service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The Complainant must prove that each of these three elements is present.
A. Identical or Confusingly Similar
The Complainant has registered the words “T-Mobile” and “T-Mobile” as CTM and as trademarks in various other countries as well as numerous figurative-trademarks containing the word “T-Mobile” and “T-Mobil” as an essential part of the trademark (Annexes 4 and 5).
Apart from the suffix “.tv” forming part of the domain name and the omission of the hyphen, there is no difference between the domain names in dispute and the Complainant’s “T-Mobile” and “T-Mobil” trademarks:
- It is a principal which applies to UDRP Cases, that the addition of a TLD does not affect the confusing similarity or identity between the domain name and the trademark; this principle was repeated by previous panels with respect to ccTLD and gTLD. This Panel follows this principal also in respect to the gTLD “.tv”.
- Concerning the omission of the hyphen, this Panel follows various previous Panel decisions, where it was held that the mere addition of a hyphen between the word elements is not sufficient to avoid confusion between the domain name and the Complainant’s trademark – the same is true regarding the omission of a hyphen.
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
As mentioned above, no response has been filed and the Respondent has not alleged any facts or elements to justify prior rights and/or legitimate interests in the disputed domain names.
Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of
proof shifts from the Complainant to the Respondent once the Complainant has
made out a prima facie case that the Respondent has no rights or interests in
the domain names. If the Complainant has done so, the burden of proof shifts
to the Respondent to offer evidence of his rights or legitimate interests in
the disputed domain names (See e.g. Document Technologies, Inc. v. International
Electronic Communications Inc., WIPO Case
No. D2000-0270). This “burden shifting” is appropriate given
that Paragraph 4(c) of the Policy, which is entitled “How to Demonstrate
Your Rights to and Legitimate Interests in the Domain Name in Responding to
a Complaint,” discusses the kind of evidence a Respondent should provide
to show that it has rights to or legitimate interests in the domain names.
The statements/contentions of the Complainant along with the rest of the evidence in the record are for this Panel sufficient to make out a prima facie showing of Respondent’s lack of rights or legitimate interests. The Panel, therefore, follows the Complainant’s contentions that the Respondent has not registered any trademark or filed any trademark application regarding “T-Mobile” or “T-Mobil” and that it does not use these signs in business. Furthermore, the Respondent has not been known under these signs, nor does he have any license or other right or permission from the Complainant to use its trademarks.
Accordingly, the Panel finds that the Complainant has satisfied its burden of proof with respect to paragraph 4(a)(ii) of the Policy; the Respondent has no rights or legitimate interests in the domain names in dispute.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists certain factors which, if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith. This is not an exclusive list, and includes:
“(i) circumstances indicating that you [the Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
Because of the Complainant’s worldwide trademark registrations and the fame of the trademark “T-Mobile” and “T-Mobil”, it is the Panels conviction that when registering the domain names at issue, the Respondent knew of the existence of the Complainant’s trademarks. This is true especially with regard to Annex 3, where the Respondent offers mobile phones and contracts on mobile communication provided by “T-Mobile”.
It seems to the Panel that the Respondent has registered the domain names primarily for the purpose of disrupting the business of the Complainant, especially with regard to the various trademark-conflicts between the Complainant and the Respondent.
The Respondent does not present its own website under the domain names in dispute;
the domain names in dispute were and are not actively used in business. This
Panel, however, follows in this respect the arguments pointed out in several
decisions especially in Telstra Corporation Limited v. Nuclear Marshmallows,
(WIPO Case No. D2000-0003):
The relevant issue is not whether the Respondent was engaged in a “positive
action in bad faith” in relation to the domain name at issue, but whether
he has “acted in bad faith.” The distinction between these two cases
is important, because “being used in bad faith” is not limited to
positive action – inaction is within the concept. In certain circumstances,
therefore, it is possible that inactivity by the Respondent may amount to the
domain name being used in bad faith. This understanding of paragraph 4(a)(iii)
of the Policy is also supported by the actual provisions of the Policy –
only paragraph 4(b)(iv) involves a positive action – and other Panel decisions
(See e.g. Red Bull GmbH v. Manuel Sousa, WIPO
Case No. D2001-0584).
The circumstances identified in paragraphs 4(b)(i) to (iii) of the Policy involve also a passive holding/or inaction of the domain name registration, even though these provisions require additional facts. It should be recalled that the circumstances listed under paragraphs 4(b)(i) to (iv) of the Policy are “without limitation” – that is, paragraph 4(b) also expressly recognizes that other circumstances can provide evidence of bad faith.
Given the widespread use and notoriety of the trademark “T-Mobile” and “T-Mobil” and taking into account that the Respondent has given no evidence, whatsoever, of any actual or contemplated good faith use by it of the domain name, and the Respondent offers products and services provided by “T-Mobile” (Annex 3), it is fairly difficult to conceive of any plausible actual or contemplated active use of the domain names by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.
Taken together these elements are compelling enough for a finding of bad faith use. “T-Mobile” and “T-Mobil” are famous trademarks and the Respondent must have known of its existence and of the nature of the goods and/or services associated with it.
The Panel thus finds that the Complainant has proven that the domain names
<tmobile.tv> and <tmobil.tv> have been registered and are being
used in bad faith according to paragraph 4(a)(iii) of the Policy by the Respondent.
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 names <tmobile.tv> and <tmobil.tv> be transferred to the Complainant.
Peter Burgstaller
Sole Panelist
Dated: March 12, 2006
Stay updated! Get new cases and decisions by daily email.
