Deutsche Telekom AG v. Vision Computer S.L.

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Deutsche Telekom AG. v. Vision Computer S.L.

Case No. D2002-0824

1. The Parties

The Complainant is Deutsche Telekom AG, a German corporation with principal

place of business at Friedrich-Ebert-Allee 140, 53113 Bonn, Germany, represented

in this proceeding by Dr. Matthias Koch, of Lovells, Marstallstrasse 8, 80539

Munich, Germany.

The Respondent is Vision Computer S.L., a Spanish limited liability company,

with seat at Viladomat 134, Bajos 2a, 08015 Barcelona, Spain, represented in

this proceeding by Ms. Elena Sellart, with same address.

2. The Domain Names and Registrars

The domain names at issue are:

<t-moviles.com> and <tmoviles.com>, both registered with Melbourne

IT, of Level 2, 120 King Street, Melbourne, Victoria 3000, Australia, and

<t-movil.com>, registered with Network Solutions, Inc. of 21355 Ridgetop

Circle, Dulles, VA 20166, USA.

3. Procedural History

3.1. On September 2 and 6, 2002, the complaint was submitted per e-mail and

hardcopy, respectively. On September 4, 2002, the Center acknowledged

receipt of the complaint, and requested confirmation of registration data to

the concerned registrars. On September 5, 2002, Melbourne IT d/b/a

Internet Name Worldwide and Network Solutions, Inc. replied to the Center’s

request. On September 10, 2002, the Center notified the complaint

and the commencement of the proceeding to the Respondent. On September 30, 2002,

Respondent sent its amended response to the Center. On October 6, 2002,

after receiving the corresponding Statement of Acceptance and Declaration of

Impartiality and Independence the Center appointed Roberto A. Bianchi as sole

panelist. The projected decision date was due on October 23, 2002.

Because the time period required for the compliance of Procedural Order No.

2 expired one day after the deadline, this decision is being sent to the Center

on October 24, 2002.

3.2. When the Administrative Panel received the hardcopy of the case file it

noticed that Annex "K" of Respondent’s amended Response of September 30, 2002,

consisted of just one page (notary public page 4G6018603), titled "Acta de Presencia"

of May 8, 2002, deed protocol number 2116, while in its Response Respondent

stated that "(...) it called on the offices of Mullerat accompanied by the Notary

of Barcelona, Mr. Josep Maria Valls Sufre, with the contracts signed and sealed

to demand their contractual fulfillment and be able to prove consequently a

posteriori, in this manner, the bad faith by Deutsche Telekom AG. The Notary

by deed protocol number 2116, made an official report of the breach of contract

of Deutsche Telekom AG, bad faith being demonstrated as they expected the Respondent

not to respond to the legal procedure WIPO

Case No. D2001-1240, and awaited the time of response to the legal procedure

to elapse". On October 22, 2002, the Panel issued Procedural Order

No. 1 where Respondent was requested to send by facsimile the full copy of the

Notary Public’s deed, or else confirm that the one page above referred was the

full text of Annex "K". On October 24, 2002, Respondent complied with

Procedural Order No. 1 by scanning the requested documents, and attaching them

to an e-mail where Respondent also made some un-requested statements. On the

same day Complainant requested permission from the Panel to submit comment on

Respondent’s last statements. On the same day the Panel issued Procedural Order

No. 2, deciding that Respondent’s un-requested statements shall not be considered,

and that Complainant’s request shall not be allowed.

3.3. The language of the registration agreements is English. Both the complaint

and the response are in English, which shall be the language of the proceedings.

4. Factual Background

The following facts and circumstances are found to be true, because they have

been proved by documentary evidence, or because the parties have not contested

them:

4.1. Complainant is one of the largest telephone companies in Europe. It covers

the entire spectrum of modern telecommunications. "T-Mobile" is the

corporate name under which the Complainant’s business in the mobile communications

sector is conducted in Germany as well as in the USA, Austria, Czech Republic,

The Netherlands, Poland, Russia and the United Kingdom.

4.2. Until the year 2001 the Complainant's mobile communication division used

the corporate name "T-Mobil" (without "e").

4.3. Complainant owns the German trademark "T-Mobil" (without "e")

with registration no. DE39550620, registered on January 9, 1996, for

the following goods and services: Class 09: Electrical, electronic, optical,

measuring, signaling, controlling or teaching apparatus and instruments (included

in this class); apparatus for recording, transmission, processing and reproduction

of sound, images or data; machine run data carriers; automatic vending machines

and mechanisms for coin operated apparatus; data processing equipment and computers.

Class 37: Services for construction; installation, maintenance and repair of

equipment for telecommunication. Class 38: Telecommunication services; rental

of equipment for telecommunication. Class 41: Instruction and entertainment

services; organization of sporting and cultural events; publication and issuing

of printed matter. Class 42: Computer programming services; data base services,

especially rental of access time to and operation of a database; rental services

relating to data processing equipment and computers; projecting and planning

services relating to equipment for telecommunication. The international trademark

registration "T-Mobil" (without "e") no. 660483, which is protected in numerous

countries, was based on this German trademark. According to the ROMARIN database

No. 6/2002 submitted by Complainant (Annex "F", page 5), the T-Mobil

international mark was accepted in Spain for all goods and services in classes

9, 14, 16 and 36, and refused for all goods and services in classes 18, 25,

28, 37, 38, 41 and 42.

4.4. Complainant also owns the German trademark "T-Mobile", with

registration no. DE39638168, registered on October 8, 1996, for the

same classes, and for same or similar goods and services as trademark DE39550620

(see 4.3.). The international trademark registration "T-Mobile" no. 680034,

which is protected in numerous countries, was based on this German trademark.

According to the ROMARIN database No. 6/2002 submitted by Complainant (Annex

"D", page 5), the T-Mobile international mark was accepted in Spain

for all goods and services in classes 14, 16, 18, 25, 28, 36 and refused for

all those in classes 9, 37, 38, 41 and 42.

4.5. Complainant has registered and is using the following domain names: <t-mobile.com>,

<t-mobile.net>, <t-mobile.org>; <t-mobiles.com>, <t-mobiles.net>,

<t-mobiles.org>; <t-mobil.com>, <t-mobil.net>, <t-mobil.org>.

4.6. On February 2, 2000, Respondent registered the domain name <t-movil.com>.

On December 7, 2000, it registered the domain names <t-moviles.com>

and <tmoviles.com>.

4.7. Respondent is a limited liability company established in Barcelona in

1993. It is a provider of IT goods and services. It sells, installs and repairs

any type of electronic material, including phones. It provides telephone connection

services, fax and mail services, routers, etc., and maintains and repairs equipment

for telecommunications, etc.

4.8. The Parties to this proceeding were the parties in WIPO

Case No. D2001-1240, Deutsche Telekom AG (complainant) v. Vision Computer

S.L. (respondent), relating the <t-mobiles.com> and <tmobiles.com>

domain names. The sole panelist Prof. Dessemontet found in his decision

of April 26, 2002, that both domain names were confusingly similar

to the corresponding trademarks of Complainant, that Respondent lacked rights

or legitimate interests in the domain names, and that it had registered and

was using them in bad faith. The Panel required both domain names to be transferred

to Deutsche Telekom. In the "Procedural History" of WIPO

Case No. D2001-1240, at section 3, it is stated that the notification of

complaint was transmitted on November 27, 2001, and the notification

of Respondent default on November 27, 2001. On December 4, 2001,

the Center received Complainant’s request for suspension of proceedings. The

Center granted the suspension of proceedings on January 29, 2002,

and extended the suspension of proceedings on February 27, 2002. On

March 27, 2002, the recommencement of proceedings took place. The

file was transmitted to the panelist on April 23, 2002. Prof. Dessemontet’s

decision is dated April 26, 2002.

4.9. The Parties appear to have been engaged in a negotiation to transfer the

domain names from Respondent to Complainant for an amount of money. This negotiation

was interrupted.

5. Parties’ Contentions

A. Complainant

Complainant contends the following:

The domain names are identical or confusingly similar to a trademark or service

mark in which the Complainant has rights. The Respondent is not, and never has

been, representative or licensee of the Complainant, nor is the Respondent otherwise

authorized to use the Complainant’s trademarks. He is also not commonly known

under t-moviles, tmoviles or t-movil. Until now, he does not use the domain

names in connection with a bona fide offering of goods and services, and he

is also not making a legitimate noncommercial or fair use of the domain names.

Given the fame and reputation of the Complainant’s marks "T-Mobil"

and "T-Mobile" it is evident that the disputed domain names were registered

with this trademarks in mind. Since the registration of the domain names in

2000 they have not been used in any legitimate way, but only to display a standard

website of the Respondent’s original registrar NameSecure, or for a direct transfer

to the respondent's website. This prevents the Complainant from registering

the Disputed Domain Names. Before and after the decision in case WIPO

Case No. D2001-1240 the Complainant's authorized representative and the

Respondent had several negotiations regarding the remaining domain names <t-moviles.com>,

<tmoviles.com>, and <t-movil.com> (the Respondent had informed the

Complainant at some stage that this domain names was for sale as well). Deutsche

Telekom was willing to pay a total price of US$ 3.000 for these three domain

names, while the Respondent asked for a total price of US$ 4.500. After several

negotiations without an acceptable agreement the Complainant decided to initiate

this proceeding for the remaining three domain names. On July 20, 2001,

the Complainant's authorized representative obtained a list, from the Network

Solutions' "whois" database at "www.networksolutions.com", of 50 domain

names, which the Respondent had registered at that time. A significant number

of these domain names were identical or confusingly similar with famous Spanish

and international trademarks, which have nothing to do with the Respondent’s

business. Having inserted the respective domain name URLs as web addresses,

the web browser displayed a standard website of the Respondent's registrar stating

that the website was "under construction". Among others, the Respondent had

registered: <iberia-online.com> and <iberia-online.net> (IBERIA

is a famous Spanish Airline), <dhlonline.net> (DHL is one of the most

important courier services), <terrabusiness.com> (TERRA is the biggest

Spanish Internet portal site), <menta-online.net> (MENTA is a famous Spanish

Internet Portal), "guipuzcoana-online.net" (Guipuzcoana is a well-known

Spanish transport company). The Complainant had explicitly mentioned these domain

names in its previous complaint regarding the domain names <t-mobiles.com>

and <tmobiles.com>. Respondent has now deleted the domain name registrations

described above in order to destroy the traces of the Respondent's cybersquatting

activities.

B. Respondent

Respondent contends that the domain names at issue are not identical or confusingly

similar to trademarks in which Complainant has rights. Respondent, as it has

offices in Spain, used the Spanish words movil and moviles. "T" is

an abbreviation for "teléfono" and "telefonía".

Complainant never registered the T-MOVIL, T-MOVILES or TMOVILES marks. As of

year 2000 nobody knew the T-MOBIL or T-MOBILE division of Complainant. The T-MOBILE

or T-MOBIL marks are unknown in Spain. T-MOBIL.com is active and has been developed

for various countries, but not in Spain. Nor have the T-MOVIL, TMOVILES or T-MOVILES

marks been registered in Spain. Respondent registered the domain names at issue

for the development of his activity, in view to encourage the visit to its website

"www.vision-computer.com", where Respondent offers sale and repair

of electronic material, and equipment and services for telecommunications.

Respondent is forwarding the "t-movil.com" website, and has forwarded

the "tmoviles.com" and "t-moviles.com" websites, to its

own website. This is a legitimate and fair use of the domain names, and a bona

fide offering of goods and services is also demonstrated.

Respondent denies that it has ever had the idea of registering the domain names

to offer them for sale to Complainant. It was Complainant who showed interest

for the domain names. Respondent denies that it was not interested in legal

disputes, and that it would be willing to sell the domain names for pesetas

1,000,000. Respondent never called Mr. Renck to offer the domain names. It was

Complainant who in March 2001, and on April 19 sent draft agreements to transfer

the domain names. That is the reason for Respondent having not appealed "to

the WIPO under legal procedure number D2001-1240 (sic)". It is true that

Respondent was ready to transfer the <t-mobiles.com>, <tmobiles.com>,

<t-moviles.com>, <tmoviles.com> and <tmovil.com> domain names

for EUR 6,000, but the initial offer was made by Mr. Renck.

6. Discussion and Findings

6.1. Identity or Confusing Similarity

Complainant has evidenced that it holds registrations for the "T-MOBIL"

(without "e") trademark DE39550620, since January 9, 1996, and for

the T-MOBILE" (with "e") trademark DE39638168, since October 8, 1996.

The domain names at issue were registered on February 2, and December 7, 2000.

The Panel finds that all three domain names are confusingly similar to Complainant’s

marks T-MOBILE or T-MOBIL. The fact that the letter "V" - instead

of "B"- is used in the domain names does not detract from a finding

of confusing similarity, because the difference is limited to just one letter

in 6-letter and 8-letter second level domain names. Furthermore the sound of

"V" is very close to the sound of "B". "V" is

used in Spanish, while "B" is used in Catalan (as well as in other

languages). The addition of the final "S" in <t-moviles.com>

and <tmoviles.com> indicates plural forms, and does not suffice to distinguish

the domain names from the trademarks. See WIPO

Case No. D2001-1240 at section 5.a. finding the adding of the single letter

"s" in the domain name <t-mobiles.com>, the plural ending of

Complainant’s trademark T-MOBILE, to be no distinctive feature. The suppression

(or addition) of a hyphen is also irrelevant. Nor can the addition of the gTLD

".com" in the domain names be relevant. See WIPO

Case No. D2000-0075 InfoSpace.com, Inc. v. Tenenbaum Ofer, April 27, 2000,

finding that "(t)he addition of a hyphen and ".com" are not distinguishing

features". The T-Mobil international mark No. 680034 was accepted in Spain

for all goods and services in classes in classes 14, 16, 36 and 9. See 4.3.

supra. Class 9 covers inter alia "apparatus for recording, transmission,

processing and reproduction of sounds, images or data", such as mobile

phones. In sum, Complainant has proved the requirement of UDRP, Paragraph 4(a)(i)

in respect of the domain names at issue.

6.2. Lack of Rights or Legitimate Interests

Under UDRP, Paragraph 4 (c)(iii) a respondent proving that it is making a legitimate

noncommercial or fair use of the domain name, without intent for commercial

gain to misleadingly divert consumers or to tarnish the mark at issue, will

make out his case that it has rights or legitimate rights in the domain name.

Respondent contends that "movil" and "moviles" are generic

terms, and that the letter "T" in the domain names at issue stands

for "teléfono" (Spanish for "telephone") and "telefonía"

(Spanish for "telephony"). The Panel easily agrees that" movil"

and its plural form "moviles" are generic in respect of anything conveying

a meaning of mobility or movement, and equally agrees that a letter can stand

for any word beginning with such letter. However, the Panel considers that T

MOBILE and T MOBIL are composite marks, where the "T" at the beginning

is what confers the marks their distinguishing power. It is very unlikely that

an IT and telephony products provider, including mobile phones (inter alia Alcatel

and Nokia mobile phones) such as Respondent, at the moment of registration could

have ignored the existence of the T-MOBIL and T-MOBILE marks, to which the domain

names are confusingly similar. Furthermore, in May 1998 the T-Mobil international

mark No. 680034 was accepted in Spain, the country of Respondent’s seat and

business, for all goods and services in classes 9, 14, 16 and 36. Typically,

phones and mobile phones are products of class 9. See 4.3. and 6.1. supra.

As to the <t-moviles.com> and <tmoviles.com> domain names Respondent

contends that it has been making a legitimate or fair use since 2001 until three

months before submitting the response, by means of re-directing the corresponding

Web pages to Respondent’s Website. As to the <t-movil.com> domain name,

Respondent contends that it is making a fair or legitimate use by forwarding

"www.t-movil.com" to Respondent’s own Website, where equipment and

services for telecommunications are offered. An independent Panel’s connection

of October 19, 2002, to the "www.t-movil.com" Website confirmed

that the domain name is being re-directed to Respondent’s own Website where

by means of an internal link to "Telefonía móvil" (Spanish

for "mobile telephony"), Alcatel and Nokia mobile phones are being

offered for sale. The expressions "t-movil", "t-moviles"

and "tmoviles" may be evocative of "telefonía móvil".

However, this Panel is not convinced that by the time of registration of the

domain names Respondent ignored the existence of the T-Mobile/T-Mobil trademarks,

trade name, products and services of Complainant, because Respondent is a dealer

conducting business in telecommunications and selling or trading in IT products

since 1993, and it is presently selling mobile phones. Instead it appears that

the re-direction or forwarding to Respondent’s website is a bad faith use under

UDRP, Paragraph 4(b)(iv) (see 6.3. infra).

The Panel concludes that Respondent lacks rights or legitimate interests in

the domain names (UDRP, Paragraph 4(a)(ii)).

6.3. Registration and Use in Bad Faith.

The panel in WIPO Case No. D2001-1240

(at 5.c.) found that Respondent had engaged in a pattern of registering domain

names reproducing the trademarks or trade names of others. This is an important

fact because in the present issue Complainant alleges that Respondent, after

the decision in WIPO Case No. D2001-1240,

"has now deleted the domain name registrations described above in order

to destroy these well-known traces of the Respondent’s cybersquatting activities".

Complaint, bottom of page 12. Respondent replies that: "The domain names

with the word "online" (iberia-online, mentaonline …) that the Complainant

states are registered by VISION COMPUTER are available, and to the disposal

of any company. Never the Respondent has deleted domain names in order to destroy

traces". Response, section III, C.

Under Rules, Paragraph 5(b)(i) the response shall "(r)espond specifically

to the statements and allegations contained in the complaint (…)". Respondent

does not deny that by July 20, 2001, it was the registrant of various

domain names corresponding to third parties’ trademarks, which is a fact established

by the panel in WIPO Case No. D2001-1240.

Respondent is denying the deletion of the domain names, but it does not

contest that it must have taken the necessary steps for the concerned domain

name registrations to be available, as they are now, as alleged by Complainant.

As established in WIPO No. Case D2001-1240

Respondent engaged in a pattern of registering various domain names corresponding

to well known trademarks belonging to third parties (IBERIA, TERRA, DHL, etc),

which together with other factors led that panel to find that Respondent had

registered <t-mobiles.com> and <tmobiles.com> in bad faith. In the

domain names dealt with in the present case the only differences with Complainant’s

marks (and with the domain names dealt with in WIPO

Case No. D2001-1240) are minor or obvious variations, or mistypings and

misspellings of such marks. All this leads this Panel to conclude that at registering

<t-movil.com>, <t-moviles.com> and <tmoviles.com> Respondent

was preventing Complainant from reflecting its marks in corresponding domain

names. This is a circumstance of bad faith registration under UDRP, Paragraph

4(b)(ii), that reads: "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".

Alternatively the bad faith registration requirement can be directly inferred

from Respondent’s assertion that it "registered these names for the development

of its activity, in view to encourage the visit to its website "www.vision-computer.com".

Response, section II, B. This connects registration in bad faith with use in

bad faith, because Respondent, as seen in 6.2. above, has re-directed or is

re-directing the t-movil.com, tmoviles.com and t-moviles.com websites to its

own Website where inter alia it is selling Alcatel and Nokia mobile phones.

That is, Respondent is attracting Internet users misspelling or mistyping Complainant’s

marks to Respondent’s Website, and offering to sell mobile phones from sources

other than Complainant. This Panel finds that under UDRP, Paragraph 4(b)(iv)

such action is an evidence of bad faith use because by using the domain names,

Respondent has intentionally attempted to attract, for commercial gain, Internet

users to its website, by creating a likelihood of confusion with the complainant's

marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s

website or of a product or service on Respondent’s website. Complainant has

made out its case under UDRP, Paragraph 4(a)(iii).

Respondent contends that during the negotiation about the transfer of the domain

names Complainant’s representatives used an "inelegant strategy in order

for Vision Computer not to submit this claim to the WIPO". Response, section

III, C. Respondent is alleging that it was "cheated into default"

by Complainant, but its contention seems without ground, on the following reasons:

First, as seen at 4.8. supra Respondent was in default as early as by

November 27, 2001. A suspension of the proceedings was granted at

the Complainant’s request of December 2, 2001, although Complainant

- following Respondent’s default - was already in a very favorable position.

A further suspension was granted later. The proceedings were recommenced as

late as March 27, 2002. The file was transmitted to the sole panelist

by April 23, 2002. Respondent did not make any submission in WIPO

Case No. D2001-1240 following its default, and the case was finally decided

on April 26, 2002. That panel’s decision is reasoned and soundly based,

and Respondent did not criticize any of its findings. Additionally, a search

of "Whois" databases independently conducted by this panelist on October 19, 2002,

shows that the domain names in that case are registered in Deutsche Telekom

AG’s name since July 5, 2002; that is, it is most likely that Respondent

has not challenged the panel’s decision in WIPO

Case No. D2001-1240 under Rules, Paragraph 4(k).

Second, by submitting the documents requested by the Panel in Procedural Order

No. 1 (see 3.2. above) Respondent has tried to prove that Complainant’s representatives

deceived it pending WIPO Case No. D2001-1240.

However as per the letter dated June 3, 2002, by Complainant’s representatives

in Barcelona (Messrs. Mullerat) to Mr. Rosas of Respondent the explanation was

provided that the agreement was not be executed since two (<t-mobiles.com>

and <tmobiles.com>) out of the five domain names - had already been ordered

to be transferred by the panel in WIPO Case

No. D2001-1240. According to Messrs. Mullerat's letter the contract

had therefore become legally impossible. It also appears that there was disagreement

about which party was bound to sign the agreement first.

Third, as per Annex H1 to the Response, Paragraph 7 of the draft agreement

sent on January 11, 2002, by Dr. Renck to Mr. Rosas of Vision Computer

reads: "After the registration of the four domain-names assigned herewith

at Namesecure.com in the name of the buyer, the buyer will immediately withdraw

its complaint filed under no. D2001-1240

with the WIPO Arbitration and Mediation Center". Similarly, Paragraph 7

of the draft agreement of domain name transfer, identified as "Draft of

05 March 2002" and marked as Annex I of the Response, reads: "After

the registration of the five domain-names assigned herewith at Namesecure.com

Inc. or INWW or VeriSign respectively in the name of the buyer, the buyer will

immediately withdraw its complaint filed under no. D2001-1240

with the WIPO Arbitration and Mediation Center". This means that the withdrawal

of the complaint before the Center was subject to the full execution of the

agreement including the transfer of the domain registrations to Complainant.

Clearly, under the draft agreement Complainant was not obliged to withdraw its

complaint before the full completion of such a condition.

In any case, and considering the record, this Panel has not noticed any bad

faith conduct in Complainant’s representatives.

7. Decision

The domain names at issue are confusingly similar to Complainant’s trademarks.

Respondent lacks rights or legitimate interests in the domain names. Respondent

has registered, and is using them in bad faith.

For the above reasons and pursuant to Policy, Paragraph 4(i) and Rules, Paragraph

15, the Administrative panel grants the remedy requested in the complaint, and

requires that the <t-moviles.com>, <tmoviles.com> and <t-movil.com>

domain name registrations be transferred to Complainant, Deutsche Telekom AG.

Roberto A. Bianchi

Sole Panelist

Dated: October 24, 2002

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