Deutsche Telekom AG v. Telecom Network Europe Limited

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Deutsche Telekom AG v. Telecom Network Europe Limited

Case No. D2001-0369

1. The Parties

The Complainant is Deutsche Telekom AG, a company incorporated under the laws

of Germany, having its principal place of business in 53113 Bonn, Germany.

The Respondent is Telecom Network Europe Limited, the legal status of which

is not clear. The address of the Respondent as contained in the domain name

registration is Cyberia Cafe, Curved Street, Temple Bar, Dublin 2, Ireland.

2. The Domain Name and Registrar

The domain name at issue is <deutsche-telekom.com>, which is registered

with Network Solutions, Inc., ("the Registrar"), 505 Huntmar

Park Drive, Herndon, Virginia 20170, United States.

3. Procedural History

A Complaint was submitted in hardcopy to the World Intellectual Property Organization

Arbitration and Mediation Center (the "WIPO Center") on March 15,

2001, and electronically on March 21, 2001. An Acknowledgment of Receipt was

sent by the WIPO Center to the Complainant, dated March 21, 2001.

On March 20, 2001, a Request for Registrar Verification was transmitted to

the Registrar.

On March 23, 2001, the Registrar confirmed that it was in receipt of the Complaint

sent to the Registrar by the Complainant, the domain name at issue, was registered

with the Registrar and that the Respondent was the current registrant of the

name. The Registrar also forwarded the requested WHOIS details, confirmed that

the Uniform Domain Name Dispute Resolution Policy was in effect and stated that

the domain name was in "Active" status.

Effective January 1, 2000, the Registrar adopted the Uniform Domain Name Dispute

Resolution Policy, adopted by the Internet Corporation for Assigned Names and

Numbers ("ICANN") on August 26, 1999, (the "Policy"). There

is no evidence that the Respondent ever requested that the domain name at issue

be deleted from the domain name database. Accordingly, the Respondent is bound

by the provisions of Policy.

The Panel has determined that the Complaint is in formal compliance with the

requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution

Policy, as approved by ICANN on October 24, 1999, (the "Uniform Rules"),

and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy,

in effect as of December 1, 1999, (the "WIPO Supplemental Rules").

The required fees for a single-member Panel were paid on time and in the required

amount by the Complainant.

No formal deficiencies having been recorded, on March 26, 2001, a Notification

of Complaint and Commencement of Administrative Proceeding (the "Commencement

Notification") was transmitted to the Respondent (with copies to the Complainant,

the Registrar and ICANN), setting a deadline of April 14, 2001, by

which the Respondent could file a Response to the Complaint. The Commencement

Notification was transmitted to the Respondent by post/courier, facsimile and

e-mail to the addresses indicated in the Complaint.

On April 17, 2001, having received no Response from the Respondent the WIPO

Center transmitted to the parties a Notification of Respondent Default. On May 8,

2001, the WIPO Center issued to both parties a Notification of Appointment of

Administrative Panel and Projected Decision Date. This Notification informed

the parties that the Administrative Panel would be comprised of a single Panelist,

Mr. Jonas Gulliksson.

The Sole Panelist finds that the Administrative Panel was properly constituted

and appointed in accordance with the Uniform Rules and WIPO Supplemental Rules.

The Administrative Panel shall issue its Decision based on the Complaint, the

Policy, the Uniform Rules, the WIPO Supplemental Rules, and without the benefit

of any Response from the Respondent.

4. Factual Background

The Complainant and its Registered Trademarks

Complainant’s trading name is "Deutsche Telekom AG", the letters

"AG" being the legally obligatory indication that the company is a

corporation in accordance with German law. The company was registered in the

Company Register under No. HRB/ 6794 by the Registry Court of the city of Bonn

on January 2, 1995.

The Complainant is a provider of telecommunication services in Europe and world-wide.

Complainant is the sole legal holder of numerous trademarks which only or as

very important part contain the words "Deutsche Telekom":

The Complainant has registered, amongst others, the following German trademarks:

- Deutsche Telekom, application date 20.02.1996, registered with the German

Patent Office under No. 396 07 816, on 03.05.1996;

- Team Deutsche Telekom, application date 22.10.1996, registered with the German

Patent Office under No. 396 45 753, on 15.01.1997;

The Complainant has registered, amongst others, the following Community Trademarks:

- Deutsche Telekom, application date 01.04.1996, registered

with the OHIM under No. 000214643;

- Team Deutsche Telekom, application date 21.04.1997, registered

with the OHIM under No. 000531483.

The Complainant has registered, amongst others, the following International

Register Trademarks:

- Deutsche Telekom, registered with the OMPI under No. IR 661 455, on 01.08.1996;

- Team Deutsche Telekom, registered with the OMPI under No. IR 680 358, on

21.04.1997.

Further, the Complainant has registered the domain names <deutschetelekom.com>

(registered on 27.11.2000), <deutschetelekom.org>, <deutsche-telekom.org>,

<deutsche-telekom.net>, (all registered on 24.02.1998) and - under the

ccTLD ".de" - <deutschetelekom.de>, <deutsche-telekom.de>,

registered with the registrar on 26.02.1998 and <telekom.de>, registered

with the registrar on 20.08.1993.

5. Parties’ Contentions

A. Complainant

There is a likelihood of confusion on the part of the relevant public. People

facing the domain <deutsche-telekom.com> are automatically lead to the

expectation that this domain forms part of the Complainant’s trademark family.

People addressing the domain name <deutsche-telekom.com> expect to be

linked to the Complainant's online presence due to the high recognizability

of this expression in favour of the Complainant.

The domain name <deutsche-telekom.com> is nearly identical to the Complainant’s

trademark and trading name "Deutsche Telekom". One difference is the

suffix ".com" which is a purely technical necessity, meant to indicate

– at least in principle – that the domain names are intended to be commercial.

The fact that the domain name in question is hyphenated, whereas the trademark

consists of two words separated by a space (blank) is also due to technical

obligations: domain names do not permit blanks. It has been found numerous times

that both the suffix and the hyphen constitute an irrelevant distinction which

does not change the likelihood of confusion (see, InfoSpace.com v. Tenenbaum

Ofer, D2000-0075:"The addition of

a hyphen and .com are not distinguishing features").

The Respondent owns no rights in the sign "Deutsche Telekom", nor

has the Complainant licensed or otherwise permitted the Respondent to use this

trademark or to apply for the disputed domain name.

Also, the Respondent is not engaged in any business activities that utilize

the domain name <deutsche-telekom.com> nor is he commonly known by the

disputed domain name.

In addition respondent is an Irish company. It is very questionable how an

Irish company can have any interest in the name "Deutsche Telekom".

Furthermore, the Respondent is not making any legitimate non-commercial or

fair use of the said domain name and, according to the Complainant’s knowledge,

never has.

Considering the fact that pursuant to paragraph 4 (a) (iii) Uniform Dispute

Resolution Policy, not only bad faith registration but also bad faith use has

to be proved by the Complainant, the examination must cover both issues.

The first issue to be determined is whether it can be proved that the domain

name <deutsche-telekom.com> has been registered by Respondent in bad faith.

As illustrated above, the expression "Deutsche Telekom" has been qualified

as being a worldwide identification for the Complainant. This qualification

is due to both the high recognition of the company name of the Complainant,

the valuable and well recognised trademarks, the excessive use of the expression

"Deutsche Telekom" by the Complainant, the internet appearance and

aforesaid public relation activities which are dominated by the term „Deutsche

Telekom". Altogether the name "Deutsche Telekom" discloses a

special reputation in favour of the Complainant.

On having the domain name registered Respondent must have been aware of the

fact that "Deutsche Telekom" is a well known trademark and tradename

enjoying good reputation globally. The company Deutsche Telekom AG is advertising

continuously in the best-visited media (television, papers, weekly and monthly

magazines, ads on giant posters), further the products and services of the Complainant

are well-known and well reputed not only in Germany but also throughout the

world. It is therefore inconceivable that the persons behind the Respondent

were not aware of the fact that "Deutsche Telekom" is a very renowned

trademark. Such registration in spite of a very well known trademark has

been held significant evidence of registration in bad faith (see, Woolworths

plc v. David Anderson, D2000-1113).

Further evidence that Respondent registered the domain name at issue in bad

faith can be found in the fact that the domain name has never resolved to a

web site or other on-line presence and still does not. There is no evidence

for any fair use at all. Given that the domain name was registered in 1996,

it must be concluded that the Respondent has never even been willing to make

any fair use of the domain name and hence registered it in bad faith.

Furthermore, the Respondent, located in Ireland, has chosen to register a domain

name which consists of two German words, linked by a hyphen. The name "Deutsche

Telekom" has a descriptive connotation for telecommunication services comming

from Germany. Being situated in Ireland, it would have been much more logical

for Respondent to use the English words "German" and "telecom"

(spelling a "c" instead of the "k") to describe the contents offered on his

web site - if that was what Respondent had in mind. Respondent, however,

chose to register the domain name containing the words of German origin. It

can therefore be inferred that Respondent was trying to imitate the Complainant’s

trademark and trading name. Consequently, Respondent was acting in bad faith

when registering said domain name.

Furthermore, it must be shown that the domain name in dispute is being used

in bad faith. The domain name <deutsche-telekom.com> does not resolve

to a web site or any other on-line presence. In other words, no positive action

has been or is being undertaken by the Respondent. However, according to UDRP

jurisdiction, "the relevant issue is not whether the Respondent is undertaking

a positive action in bad faith in relation to the domain name, but instead whether,

in all the circumstances of the case, it can be said that the Respondent is

acting in bad faith" (see, WIPO Case

D2000-0003, Telstra Corp. Ltd. V. Nuclear Marshmallows, sec. 7.9). In other

words, inaction – such as passive holding – is within the concept of "being

used in bad faith". This jurisdiction is supported by paragraph 4 (b) UDRP

which denominates – without limitation – four sets of circumstances that are

considered evidence of bad faith registration and use and of which three do

not necessarily involve activity. Since these circumstances are without limitation,

paragraph 4 (b) UDRP recognizes that other circumstances can also be sufficient

evidence that a domain name is being used in bad faith.

In light of the particular circumstances of this case, the Respondent’s passive

holding of the domain name satisfies the requirement of paragraph 4 (a) (iii)

that the domain name be used in bad faith.

Respondent has been asked by Complainant's attorneys to cease and desist on

April 17, 2000, by e-mail and letter. A copy of the letter is provided as Annex

[W 12] to the Complaint. However, Respondent has not given a reasonable

reply to Complainant’s letter to cease and desist on the base of which at latest

Respondent evidently must have been aware of the facts laid out. Given that

the domain name was registered in 1996, and no online presentation such as a

homepage has ever been linked to it, it can be inferred that the Respondent

has never even been willing to make any fair use of the domain name and is not

planning any fair use in the near future.

Respondent's sitting on the domain name in spite of Complainant's efforts combined

with the fact that Respondent has not actively used it during its five years

of existence amounts to acting in bad faith.

Furthermore, considering the renown of the trademark "Deutsche Telekom" - as

demonstrated above -, it is not possible to conceive of any circumstances in

which the Respondent could legitimately use the domain name.

Even though Respondent – according to Complainant's knowledge – may not have

engaged in a "pattern of conduct" as demanded by Paragraph 4 (b) (ii) UDRP to

prevent the trademark owner from reflecting his mark in a corresponding domain

name, such intention can be inferred from the fact that Respondent has not actively

used the name at issue for five years.

Finally the Complainant has requested the Panel to transfer the domain name

<deutsche-telekom.com> from the Respondent to the Complainant.

B. Respondent

Respondent has not contested the allegations of the Complaint.

6. Discussion and Findings

According to Paragraph 15 (a) of the Rules the Panel shall decide a complaint

in accordance with the Policy, the Rules and any rules and principles of law

that it deems applicable.

Paragraph 4 (a) of the Policy directs that the Complainant must prove each

of the following:

1) that the domain name registered by the Respondent is identical or confusingly

similar to a trademark or service mark in which the Complainant has rights;

and,

2) that the Respondent has no legitimate interests in respects of the domain

name; and

3) the domain name has been registered and is being used in bad faith.

The domain name <deutsche-telekom.com> is identical with the trademark

"Deutsche Telekom" except for the addition of a hyphen and the suffix

".com".

The Respondent has not proven that he has any prior rights or legitimate interests

in the domain name.

The words Deutsche Telekom are considered distinctive and registrable as a

trademark and the words are not generic or descriptive words which can be used

by anyone.

The prerequisites in the Policy, Paragraph 4 (a) (i) and (ii) are therefore

fulfilled.

Paragraph 4 (a) (iii) of the Policy further provides registration and use in

bad faith.

It is obvious from the facts in the case, i.e. the prior ownership by Complainant

of identical trademark registrations, the fact that the words "Deutsche

Telekom" has a high degree of individuality and distinctiveness and the

fact that it is highly improbable that the Respondent has selected the name

without first having noticed the Complainant´s numerous trademark registrations

and its wide reputation in the words "Deutsche Telekom", the non-contested

statement in the Complaint and the contents of the Policy Paragraphs 4 (a) (i-iii)

and 4 (b) (i) that the domain name has been registered and used in bad

faith. Cf. Telstra Corporation Limited v. Nuclear Marshmallows, Case

No. D2000-0003.

Consequently, all the prerequisites for cancellation or transfer of the domain

name according to Paragraph 4 (i) of the Rules are fulfilled.

The Complainant has requested transfer of the domain name.

7. Decision

In view of the above circumstances and facts the Panel decides, that the domain

name <deutsche-telekom.com> registered by the Respondent is identical

to the trademark and service marks in which the Complainant has rights, and

that the Respondent has no rights or legitimate interests in respect of the

domain name <deutsche-telekom.com>, and that the Respondent’s domain name

has been registered and is being used in bad faith. Accordingly, pursuant to

Paragraph 4 (i) of the Policy, the Panel requires that the registration

of the domain name <deutsche-telekom.com> be transferred to the Complainant.

Jonas Gulliksson

Sole Panelist

Dated: May 21, 2001

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