Deutsche Telekom AG v. Spiral Matrix

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Deutsche Telekom AG v. Spiral Matrix

Case No. D2005-1145

1. The Parties

The Complainant is Deutsche Telekom AG, Germany, represented by Lovells, Germany.

The Respondent is Spiral Matrix, Kenya.

2. The Domain Names and Registrar

The disputed domain names <tmobilepictures.net>,

<tmobileprepaidcard.com>, <tmobilerebates.net>, <tmobilesidekick3.com>,

tmobiletextmessages.com and <tmobilus.com> are registered with Intercosmos

Media Group d/b/a directNIC.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2005. On November 4, 2005, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain names at issue. On November 4, 2005, Intercosmos Media Group d/b/a directNIC.com 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 November 14, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was December 4, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 5, 2005.

The Center appointed Dr. Fabrizio Bedarida as the

Sole Panelist in this matter on December 19, 2005. 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 has registered national, Community

and International trademarks reflecting the terms “T-Mobile” and

“T-Mobil”. The registered trademark “T-MOBILE” with

registration No. 2282432, has been protected in the USA since February 27, 1997.

Furthermore, the Complainant has registered the designation “T-Mobile”

as a Community trademark in the European Union (EU 000485441) and international

trademarks (IR 680034 and IR 680035). Moreover, the Complainant has registered

the designation “SideKick” as a Community trademark in the European

Union (EU 3137726) and international trademark (IR 813007). SideKick

is the name of the Complainant’s subsidiary Handheld (PDA).

5. Parties’ Contentions

A. Complainant

The Complainant submits that:

The disputed domain names are confusingly similar to the Complainant’s trademarks “T-MOBILE” and “SIDEKICK”. All of the disputed domain names contain the Complainant’s well known trademarks “T-MOBILE” with an additional generic term, such as “textmessages”, “rebates”, “pictures”, “sidekick”, “prepaidcard” or “US”. This leads Internet users to the assumption that the domain names might be connected to the Complainant’s subsidiary T-Mobile. The domain name <tmobilesidekick3.com>, is moreover confusingly similar to the Complainant’s trademarks T-MOBILE and SIDEKICK.

The Respondent does not show any legitimate interest in the use of the disputed Internet domain names. In particular, none of the circumstances listed under 4 (c) of the Policy, possibly demonstrating rights or legitimate interests, are given. The domain names do not appear to be in use for any bona fide offering of goods or services and there is no indication that the Respondent was known by the name “T(-)Mobile” prior to registration of the domain names. The Respondent is not authorized or licensed to use the Complainants marks.

The disputed domain names have been registered and are being used in bad faith. There has been no legitimate use of the domain name by the Respondent.The Respondent had knowledge of the Complainant’s trademarks and business names when he registered the domain names. Regarding the fact that the disputed domain names are clearly oriented to the Complainant’s famous trademarks, it seems to be obvious that the Respondent has registered the domain names either to block the Complainant’s internet activities or to attract to his websites internet users looking for the products and services of Complainant, thereby making commercial gain by the sponsored links. According to UDRP Art. 4 (b) (iii) it shall furthermore be evidence for registration and use of the domain name in bad faith if by using the domain name respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with the complainant’s mark. Given the reputation of Complainant’s subsidiaries and brands, “T-Mobile” in various parts of the world the Respondent must have been aware of Complainant’s trademarks when registering and using the disputed domain names. The Respondent was obviously well aware that it is very likely that Internet users looking for Complainant’s subsidiaries are misled to Respondent’s websites. Under the websites that are connected with the Respondent’s domain names there is a list of sponsored links, thereby allowing the Respondent to make commercial gain.

B. Respondent

The Respondent did not reply to the Complainant’s

contentions. Thus Respondent has failed to submit any statement. He has not

contested the allegations in the Complaint and the Panel shall decide on the

basis of Complainant’s submissions, and shall draw such inferences from

the Respondent’s default that it considers appropriate (paragraph 14(b)

of the Rules).

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain names registered by the Respondent be transferred to the Complainant:

(1) the domain names are identical or confusingly similar to a trademark or service mark (“mark”) in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain names;

(3) the domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds the disputed domain names to be confusingly similar to the

trademarks owned by the Complainant. As indicated by the Complainant and in

accordance with many decisions rendered under the Policy the addition of descriptive

terms to a trademark is not a distinguishing feature. In other words, the mere

addition of the words “text messages” and/or “rebates”

has not such an influence upon the overall impression that it would exclude

the likelihood of confusion between the domain names and the Complainant’s

trademarks. (see A. Nattermann & Cie Gmbh, Aventis Pharma SA v. Derrick

Horner WIPO Case No. D2003-0844, Infospace.com,

Inc. v. Tenembaum Ofer, WIPO Case No. D2000-0075,

Sparco Srl v. Mr. Alexander Albert W. Gore/Ukrainian Cat.. University

WIPO Case No. D2003-0448, Toyota France

and Toyota Motor Corporation v. Computer Brain, WIPO

Case D2002-0002 and Microsoft Corporation v. J. Holiday Co., WIPO

Case No. D2000-1493).

In the present case the Panel agrees with Complainant’s view that the addition of the terms “pictures”, “us”, “text messages”, “rebates” and/or “prepaidcard” to the trademark T-MOBILE are likely to lead internet users to the assumption that the domain names might be connected to the Complainant’s subsidiary T-Mobile. As regards the domain name <tmobilesidekick3.com>, it should be noted that it is composed of two of the Complainant’s trademarks, i.e. T-MOBILE and SIDEKICK.

The Complainant has thus succeeded in proving evidence of the confusing similarity between its trademarks and the domain names under dispute.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The respondent in a UDRP proceeding does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:

(a) that before any notice to the respondent of the dispute, he or she used or made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

(b) that the respondent is commonly known by the domain name, even if he or she has not acquired any trademark rights; or

(c) that the respondent intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

The Respondent does not appear to have any connection or affiliation with the Complainant, that has not licensed or otherwise authorised Respondent to use or apply for any domain name incorporating the TMOBILE and/or SIDEKICK trademarks. Respondent does not appear to make any legitimate use of the domain names for his own commercial or non-commercial activities. Respondent has not been known under these domain names. Respondent has not filed any Response to the Complaint and has not alleged any facts or elements to justify prior rights and/or legitimate interests in the disputed domain names. Therefore, the Panel concludes that the absence of any legitimate use and the Respondent’s failure to justify the use of the disputed domain names, constitutes prima facie evidence of a lack of rights to or legitimate interests in the domain name.

Accordingly, the Panel finds that the Complainant has satisfied the burden of proof with respect to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:

(i) circumstances indicating that the holder has registered or has 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 the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has 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 the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.

Accordingly, for a Complainant to succeed, the Panel must be satisfied that the domain name has been registered and is being used in bad faith.

In absence of contrary evidence, the Panel finds that,

given the widespread use and fame of the Complainant’s TMOBILE trademark,

Respondent had actual knowledge of Complainant’s trademark when he registered

the domain names. The Panel, in accordance with previous decisions issued under

the UDRP, is of the opinion that actual knowledge of Complainant’s trademark

and activities at the time of the registration of the disputed domain may be

considered an inference of bad faith (see Parfums Christian Dior v. Javier

Garcia Quintas and Christiandior.net, WIPO

Case No. D2000-0226 and WIPO Case No. D2000-1409,

Sony Kabushiki Kaisha v. Inja, Kil “It is inconceivable that the

Respondent could make any active use of the disputed domain name without creating

a false impression of association with the Complainant. The Respondent was not

authorized by the Complainant to use neither its mark nor the disputed domain

name”.

As regards Respondent’s use of the domain names,

it appears that under the websites that are connected with the Respondent’s

domain names there is a list of sponsored links, thereby allowing the Respondent

to make commercial gain. As stressed in Deutsche Telekom AG v. WWW Enterprise

Inc., (WIPO Case No. D2004-1078),

“it is now a well known practice to display on a web page or search engine

various links to other commercial websites, every link activated by an Internet

user enables the host of the search engine to collect financial remuneration

proportional to the number of connections.” Therefore, as affirmed

by Complainant it seems evident that the Respondent has registered and used

the domain names with the intent to attract to his websites internet users looking

for the products and services of Complainant, thereby making commercial gain

by the sponsored links.

This Panel agrees with previous Panels, that have

held that it was an evidence of bad faith if “the Respondent is using

the disputed domain name to direct visitors to a search engine that provides

sponsored links” (Lowen Corporation d/b/a Lowen Sign Company v.

Henry Chan, Case No. D2004-0430; Associazione

Radio Maria v. Mr. Hong Hee Dong, WIPO

Case No. D2005-0062).

According to the Policy art. 4 (b) (iii) this is further evidence for registration and use of the domain names in bad faith.

Moreover, the fact that Respondent chose to register

six domain names all comprehensive of Complainant’s registered trademark,

combined with the addition of generic terms which are descriptive of one of

Complainant’s activities, with the use of the same domain names to show

sponsored links promoting goods and services of Complainant’s competitors,

may be considered further inference of 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 names <tmobiletextmessages.com>, <tmobilesidekick3.com>, <tmobilerebates.net>, <tmobilepictures.net>, <tmobilus.com> and <tmobileprepaidcard.com> be transferred to the Complainant.

Fabrizio Bedarida

Sole Panelist

Dated: January 2, 2005

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