WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Deutsche Telekom AG v. Janaslani Enterprises, LLC
Case No. D2008-0219
1. The Parties
The Complainant is Deutsche Telekom AG, of Germany, represented by Lovells LLP, Germany.
The Respondent is Janaslani Enterprises, LLC, of California, United States of America.
2. The Domain Names and the Registrar
The disputed domain names (collectively referred to in this decision as the “Domain Names”) are:
The Domain Names are all registered with GoDaddy.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2008. On February 14, 2008 and February 28, 2008 the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On February 24, 2008 and February 28, 2008, the Registrar 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 Domain Names. The Center verified that the Complaint satisfied the formal requirements of the 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 proceeding commenced on March 4, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 24, 2008. When no Response had been received by March 24, 2008, the Center issued a Notice of Respondent default on March 25, 2008. Subsequently, on the same day however a Response (in the form of a letter dated March 11, 2008, attaching a copy of an email dated February 21, 2008 from the Respondent to the Complainant’s representative) was received by the Center, by email. A hard copy of this letter was received on March 26, 2008.
In the February 21, 2008 email to the Complainant’s representative, the Respondent had indicated that it would “transfer these domain names to T-mobile per your request”.
The Center appointed Warwick Smith as the sole panelist in this matter on April 4, 2008. 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 Europe’s largest telecommunications company. Over the past two years, the Complainant has completed or initiated transactions amounting to US$66 billion. It serves customers in more than 50 countries through regional units, with the primary focus being on the European and United States of America markets.
The Complainant’s subsidiary T-Mobile International AG & Co. KG, is one of the world’s largest providers of GSM mobile communications: it had more than 106 million customers in Europe and the United States by the end of 2006. By the same time, the Complainant’s subsidiary T-Mobile USA had become one of the fastest growing wireless service providers in the United States, offering digital voice, messaging, and high-speed wireless data services to more than 25 million customers.
“T-Mobile” is the corporate name under which the Complainant’s business in the mobile communications sector is conducted, and that name has become widely recognized as identifying the Complainant.
The Complainant’s Trade Marks
The Complainant has registered a large number of national, Community, and International trade marks, incorporating the term “T-Mobile”. The particular trade mark on which the Complainant relies in this administrative proceeding, is the mark TMOBILE registered in the United States of America under Registration No. 2282432, with effect from February 27, 1997. The mark is registered for numerous categories of goods and services in international classes 9, 14, 16, 18, 25, 28, 36, 37, 38, 41, and 42.
The Complainant is the registered proprietor of the mark T-MOBILE in the European Union, under registered number EU 00485441, and internationally under numbers IR 00680034 and IR 00680035.
The Complainant’s domain names
The Complainant and its subsidiary T-Mobile USA have registered and used, among many others, the following domain names: <t-mobile.com>, <t-mobile.us>, <tmobile.com> and <tmobile.us>.
The Respondent and the Domain Names
16 of the 34 Domain Names were registered on February 28, 2007. A further three of the Domain Names were registered on March 1, 2007, and two more on March 5, 2007. The remainder of the Domain Names were registered on September 28, 2007.
The Complainant says that the Domain Names resolve to a website (“the Respondent’s website”) bearing the brand or firm name: “PINZOO – Instant Phone Card Co”. The Complainant says that, in addition to its own products, products of the Complainant’s competitors are offered through the Respondent’s website. The Complainant has reproduced in the Complaint a screenshot from the website at the Domain Name <tmobile-prepaid.com>, taken on December 12, 2007. On the right hand side of the December 12, 2007 screenshot of the Respondent’s website, there is a section headed “Shop by Brand”. Beneath this heading there are what appear to be click-on links to the websites of various telecommunication service providers, many of which do appear to be competitors of the Complainant. The December 12, 2007 screenshot features a map of the United States of America, showing “T-Mobile To Go Prepaid Refill Minutes Coverage”. Beneath the map of the United States of America, information is provided for new customers about how they can obtain their “T-Mobile To Go Prepaid Refill Minute INSTANT PIN”.
At annex G to the Complaint, the Complainant has reproduced a number of screenshots taken on December 11, 2007 and on February 7, 2008. They are screenshots of web pages to which some, but not all, of the Domain Names then resolved.
The screenshots produced by the Complainant at annex G to the Complaint, all appear to be identical. Each consists of the “Wireless Refill” page from the Respondent’s website, and in each case the page is prominently headed with the name “PINZOO Instant Phone Card Co”. Essentially, the web pages offer refills and top-ups on mobile phone cards, which the user can obtain through a PIN which is emailed to the user. The screenshots feature prominently the expressions “refill”, “to go”, “pay as you go”, “top-up”, “prepaid”, and “minutes”.
The Parties’ Correspondence
On September 12, 2007 the Complainant’s representative wrote to the Respondent by email, drawing the Respondent’s attention to the Complainant’s various T-MOBILE trade mark registrations. The letter dated September 12, 2007 listed a total of 20 of the Domain Names which had been registered by that date, and noted that 17 of those 20 were inactive. Only the Domain Names <tmobile-prepaid.com>, <t-mobile-cards.com>, and <t-mobile-card.com> were said to be active at that time, and they resolved to the “PINZOO-Instant Phone Card Co” website. The September 12, 2007 letter alleged bad faith registration by the Respondent, and proposed that the 20 Domain Names which had then been registered be assigned to the Complainant.
A Response was sought by September 26, 2007, but no Response was received by that date. The Complainant’s representatives followed up with a further email on November 5, 2007, seeking a Response to the Complainant’s proposals by November 12, 2007, failing which legal proceedings would be commenced. No Response was received, and the present proceeding was commenced by the Complainant on February 12, 2008.
In its email dated February 21, 2008 to the Complainant’s representative, the Respondent denied having received the email communications of September 12, 2007 and November 5, 2007 from the Complainant’s representative, saying that those emails must have been filtered out by the Respondent’s spam software. The Respondent said that it had been using the Domain Names to resell the Complainant’s prepaid minutes, and that it had not been the Respondent’s intention to infringe on T-Mobile’s branded name. The Respondent said that it had that day “taken down” each of the Domain Names. The email also indicated that the Respondent would transfer the Domain Names to the Complainant, and asked that a transfer request be sent to the Respondent via the Complainant’s registrar.
In its letter to the Center dated March 11, 2008, the Respondent referred to its February 21, 2008 communication to the Complainant’s representative, and advised that, on that date, the Respondent had parked the Domain Names on the Registrar’s name servers, ready to be transferred to the Complainant. The Respondent confirmed that, “without conceding that it is required by law to release the Domains but as an abundance of good faith”, it had prepared to transfer the Domain Names to the Complainant upon a formal acceptance from the Complainant acknowledging receipt of the Respondent’s February 21, 2008 email and/or a response from the Center “accepting the conditions set forth, with regards to releasing the Domains, in the original Complaint filed on February 21, 2008”.
5. Parties’ Contentions
The Complainant contends:
1. The Domain Names are confusingly similar to the Complainant’s T-MOBILE trade mark, for the following reasons:
(i) The Domain Names all consist of the Complainant’s famous T-MOBILE trade mark plus common generic terms like “pre-paid”, “card(s)”, “fill up(s)”, “pin(s)”, “recharge”, “minute(s)”, “reload”, “re up” and “to go”. Those common, generic additions to T-MOBILE, suggest to Internet users that the Domain Names are linked to a website where the Complainant’s T-Mobile products and services are available.
(ii) The suffix “.com” in the Domain Names does not influence the consideration of similarity or otherwise for the purpose of paragraph 4(a)(i) of the Policy.
(iii) Similarly, the use or absence of hyphens in trade marks or domain names, does not affect the comparison the Panel is required to make under paragraph 4(a)(i) of the Policy, as “this distinction does not change the likelihood of confusion” (citing BIC Deutschland GmbH & Co KG v. Paul Tweed, WIPO Case No. D2000-0418, and Chernow Communications, Inc v. Jonathan D Kimball, WIPO Case No. D2000-0119).
(i) None of the examples of rights or legitimate interests provided at paragraph 4(c) of the Policy apply.
(ii) The Respondent is not, and has never been, a representative or licensee of the Complainant. Nor is the Respondent otherwise authorized to use the Complainant’s marks.
(iii) The Respondent does not use the Domain Names for any bona fide offering of goods or services, and there is no evidence of demonstrable preparations to use the Domain Names, or a name corresponding to the Domain Names, in connection with a bona fide offering of goods or services. The Respondent uses the Domain Names to gain profit by gathering business based on the reputation and fame of the Complainant’s trade marks.
(iv) In former cases, panels have held that “a single distributor is extremely unlikely to have a legitimate interest in precluding others from using numerous variants on a mark (Nabisco Brands Co v. Patron Gp., Inc, WIPO Case No. D2000-0032; Magnum Piering, Inc v. The Mudjackers and Garwood S. Wilson, Sr, WIPO Case No. D2000-1525).
(v) The only conceivable reason for the registration and use of the Domain Names is a free-riding on the Complainant’s famous T-MOBILE trade mark, and its inherent capability of attracting customers.
(vi) The product range offered through the Respondent’s website includes products of the Complainant’s competitors. This demonstrates that the registration and use of the Domain Names is illegitimate as it tends to create confusion as to the commercial source of the products offered under the Domain Names. When entering the Domain Names, the public will believe that the Domain Names are somehow connected or associated with, or authorized by, the Complainant, when that is not the case.
(vii) There is no indication that the Respondent has ever been known by any of the Domain Names, nor that the Respondent has acquired any trade mark or service mark rights in any of the Domain Names.
(viii) There is no indication of any legitimate non-commercial or fair use of the Domain Names. In fact, the Domain Names point to websites on which the Respondent offers products for its own commercial gain.
3. The Domain Names were registered and are being used in bad faith:
(i) The Respondent obviously had knowledge of the Complainant’s T-MOBILE trade mark and business name when it registered the Domain Names. The Complainant’s T-MOBILE mark is well known worldwide, and in particular in the United States of America.
(ii) Previous administrative panel decisions under the Policy have held that registration in such circumstances is indicative of bad faith (citing Pepsi Co Inc v. Paul J Swider, WIPO Case No.D2002-0561 – “respondent’s registration, without authorization, of a domain name that is identical to complainant’s famous […] mark and […] trade name is in and of itself evidence of bad faith”).
(iii) The Respondent has been using the Domain Names in bad faith. The Respondent has been using the reputation of the Complainant’s trade mark to attract internet users to the Respondent’s website. That is demonstrated by the large number of Domain Names registered by the Respondent which include the Complainant’s T-MOBILE trade mark.
(iv) The fact that the Respondent offers, among other products, products of the Complainant, does not affect the issue of bad faith. The whole of the Respondent’s conduct shows bad faith use. In particular, the Respondent has been taking unfair advantage of the fame of the Complainant’s T-MOBILE mark, by registering an extensive number of Domain Names.
(v) The Respondent failed to reply to the cease and desist letter sent by the Complainant’s representative on September 12, 2007, and failed to respond to the reminder sent on November 5, 2007. A respondent’s silence and inactivity has been held to indicate bad faith in previous panel decisions. In respect of famous marks, which have a higher level of protection in international intellectual property agreements (see e.g. Article 16(2) and (3) of the TRIPS Agreement), the person who registers a confusingly similar domain name should be willing to show an intention to express himself or herself by responding to communications and/or indicating a good faith use of the domain name (see CBS Broadcasting v. LA-Twilight-Zone, WIPO Case No. D2000-0397, and British Sky Broadcasting Group Plc v. Mr. Pablo Merino and Sky Services S.A., WIPO Case No. D2004-0131).
(vi) Any attempt to actively use any of the Domain Names would inevitably lead to a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website among Internet users, who would inevitably be led to believe that such a website would be owned by, controlled by, established by, or in some way associated with, the Complainant (citing Sony Kabushiki Kaisha v. Inja, Kil, WIPO Case No. D2000-1409).
(vii) In summary, taking account of the number of the Domain Names, the fame of the reflected trade mark T-MOBILE, and the lack of any substantive response from the Respondent, it is not possible 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 trade mark law.
As noted in the Factual Background section of this decision, the Respondent has advised by email dated February 21, 2008 and by letter dated March 11, 2008, that it is prepared to transfer the Domain Names to the Complainant. However the Respondent has expressly noted that it is not thereby conceding that it is required by law to transfer or release the Domain Names, and that “it has not been Janaslani’s intention to utilize [the Domain Names] in bad faith”. In its email dated February 21, 2008, the Respondent also said: “our intention has not been to infringe on T-Mobile’s brand name”.
6. Discussion and Findings
A. Procedural Issues –Late Receipt of Respondent’s March 11, 2008 Letter in Response, and Respondent’s Consent to Transfer
(i) Late Filing
The Panel accepts and has considered the Respondent’s letter dated March 11, 2008, and the attached email dated February 21, 2008. These documents were received by the Center only 1 day late, and the Respondent appears to have acted promptly on receipt of a copy of the Complaint (first by sending the email to the Complainant’s representative on February 21, 2008, and later by sending the letter dated March 11, 2008 to the Center). Particularly as the Respondent is volunteering to transfer the Domain Names to the Complainant, there is no prejudice to the Complainant in admitting these documents.
(ii) Respondent’s Consent to Transfer Order
Numerous panel decisions under the Policy have considered the position where a respondent files a short response, offering to transfer the disputed domain name to the complainant. There appears to be a sharp divergence among WIPO UDRP panels, on how such cases should be resolved.
A very recent example of such a case is Chicago Pneumatic Tool Company LLC v. Texas International Property Associates – NA NA, WIPO Case No. D2008-0144. In that case, the respondent agreed to the relief requested by the complainant, offering a “unilateral consent to transfer”. However, the respondent denied that such offer was an admission of the three elements of paragraph 4(a) of the Policy. The respondent in Chicago Pneumatic Tool Company LLC noted that some panels have granted the relief requested by a complainant in such cases, without reviewing the merits of the complainant’s claim. Other panels have taken such an offer as an admission that the three elements of paragraph 4(a) of the Policy are satisfied. Thirdly, some panels have considered complaints in such cases on the merits, and come to decisions independently of the “unilateral consent to transfer”.
The panel in Chicago Pneumatic Tool Company LLC followed the third of those courses i.e., it elected to examine the case as if the respondent had defaulted (as the panel put it, “since Respondent generally states that it does not admit to any of Complainant’s allegations nor did it provide a single countervailing item of evidence in its Response”).
In Ranbaxy Laboratories Limited v. Jucco Holdings, WIPO Case No. D2007-1562, the Panel came to a similar view, stating:
“Contrary to the language in Williams – Sonoma, Inc. v EZ-Port, WIPO Case D2000-0207, we believe that Rules 10(a) combined with 10(c) do not authorize the Panel to transfer the disputed domain name without review of the three main conditions set forth in paragraph 4(a) of the Policy, just because the Respondent has consented to the relief. The Complainant who has made a claim is entitled to a decision on the merits of the case and based on the arguments that the Panel deems to be proven.
To summarize, it is only where the two parties involved have in one way or another agreed on such expedited transfer, that it may take place. In such a case, the panel must be satisfied that the Complainant appears to hold title on the disputed domain name, ie appears to own a trade mark.”
The most commonly cited cases in which panels have ordered the transfer of a disputed domain name (when the respondent has made a unilateral offer to transfer) without considering the merits of the case, appear to be the Williams-Sonoma, Inc case (supra), and The Cartoon Network LP, LLP v. Mike Morgan, WIPO Case No. D2005-1132. The reasoning adopted by the panels in those cases appears to have been that ordering a transfer without considering the merits was the expeditious course, and could be accommodated within paragraph 10(a) of the Rules (which permits a panel to conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules).
The Panel in this case will follow the course adopted by the panel in Chicago Pneumatic Tool Company LLC. As in that case, the Respondent here has effectively declined to accept liability for the three elements of paragraph 4(a) of the Policy, so there is no question of dealing with the proceeding as if the Respondent had admitted those elements.
As for the alternative of “rubber stamping” a respondent’s “consent to transfer”, the Panel agrees with the panel in Chicago Pneumatic Tool Company LLC, that there does not appear to be any proper basis in the Policy or the Rules justifying such an approach, at least where the respondent is only offering to accede to the relief sought by the complainant, and is not admitting the grounds of the complaint. Paragraph 10(a) of the Rules does not relieve the panel of the responsibility of conducting the proceeding “in accordance with the Policy”, and paragraph 4(a) of the Policy provides unequivocally that the complainant must prove that each of the three elements of paragraph 4(a) are present. Further, paragraph 17 of the Rules permits a respondent to object to a request by a complainant to withdraw its complaint, if the respondent has a “justifiable” objection to the withdrawal of the proceeding. (Under that Rule, a panel may, subject to that right of objection, terminate a proceeding if it has become “unnecessary” to continue it.) If the complaint was entirely without merit, to the point that the panel felt that it was bound to consider the possibility of reverse domain name hijacking, one can readily imagine the panel declining to accede to the complainant’s request to terminate the proceeding.
As there might be cases where a respondent justifiably objects to the termination of a proceeding under paragraph 17 of the Rules, so one can imagine circumstances where a complainant might want a proceeding to continue, notwithstanding the respondent’s unilateral consent to the transfer of the disputed domain name. The obvious example is the situation where the complainant is interested to obtain a decision on the merits in order to support an argument in other cases against the same respondent, that the respondent has engaged in a pattern of abusive domain name registrations (relevant to the example of bad faith registration and use set out at paragraph 4(b)(ii) of the Policy).
Having regard to the considerations discussed above, it seems to the Panel that it is not appropriate to make an order transferring the Domain Names on the unilateral consent of the Respondent. (If the Respondent’s unilateral consent to transfer could have been fairly read as an admission of each of the elements of paragraph 4(a) of the Policy, that would have been a different matter. But that was not the position.)
For the foregoing reasons, the Panel will address the present Complaint on its merits.
B. General Principles
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) That the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That the Respondents has no rights or legitimate interests in respect of the Domain Names; and
(iii) That the Domain Names have been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the Panel to:
“… 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”.
C. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has proved this part of the Complaint, in respect of all of the Domain Names.
First, the Complainant has proved that it is the registered proprietor in the United States of America of the mark T-MOBILE. Many of the Domain Names incorporate that trade mark exactly, and in respect of those Domain Names, that may be sufficient to establish confusing similarity between the mark and the particular Domain Name – see, for example, Nokia Group v. Mr. Giannattasio Mario, WIPO Case No. D2002-0782, referred to in the three-member Panel decision The Ritz Hotel Limited v. Damir Kruzicevic, WIPO Case No.D2005-1137, and followed by this Panel in Quintessentially UK v. Mark Schnorrenberg/Quintessentially Concierge, WIPO Case No. D2006-1643 and Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857.
In respect of those Domain Names where the Complainant’s T-MOBILE mark has not been reproduced precisely, the only difference is the absence of the hyphen between the “t” and the “mobile”. In respect of such cases, the Panel accepts the Complainant’s submission based on the BIC Deutschland GmbH & Co KG v. Paul Tweed case, that the use or absence of hyphens in domain names does not affect the “confusingly similar” question, because “this distinction does not change the likelihood of confusion”.
Nearly all of the Domain Names have been formed by taking the Complainant’s T-MOBILE mark (or the nearly identical expression “tmobile”), and adding to it words or expressions which are typically associated with the mobile telecommunications field in which the Complainant’s T-MOBILE mark is well known. The expressions “prepaid”, “card(s)”, “pin(s)”, “fill up”, “recharge”, “minutes”, “reload”, “to go”, “mobile”, “refill”, “airtime”, “top off”, “top up”, “units”, “pay as you go”, all fit into that category. The expressions “payg”, and “reup” may be a little further removed from the common language of the mobile telecommunications industry, but to the extent that they might not be understood by some Internet users, they would have little or no effect on the idea, or impression, conveyed by the Domain Names which include those abbreviations. The Internet user would be left with the dominant expression “t-mobile” (or “tmobile”).
Numerous UDRP panel decisions have held that the likelihood of confusion is only exacerbated when a respondent registers a domain name by adding to a complainant’s trade mark words which are essentially descriptive or suggestive of the complainant’s goods or services marketed under that trade mark. See, for example, The Ritz Hotel Limited v. Damir Kruzicevic and Quintessentially Concierge UK cases (supra).
Having regard to the foregoing, the Panel concludes that the Domain Names are all confusingly similar to the T-MOBILE mark in which the Complainant has rights.
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable 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; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent 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 trade mark or service mark at issue.
If the circumstances are sufficient to constitute a prima facie showing by the complainant of absence of rights or legitimate interests in the domain name on the part of the respondent, the evidentiary burden shifts to the respondent to show, by plausible, concrete evidence, that it does have a right or a legitimate interest in the domain name.
That approach is summarized at paragraph 2.1 of the Center’s online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, as follows:
“A Complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4 (a)(ii) of the UDRP”.
In this case, the Complainant has proved that it has rights in the T-MOBILE trade mark, and that the Domain Names are all confusingly similar to that mark. It has also proved that it has not licensed or authorized the Respondent to use its T-MOBILE mark (or any confusingly similar variation thereof), whether in a domain name or otherwise. There is no suggestion in the record that the Respondent (or any business or organization of the Respondent) has been “commonly known by” any of the Domain Names, so there is no basis for the application of paragraph 4(c)(ii) of the Policy. Nor is there any suggestion that the Respondent has been making a legitimate non-commercial or fair use of the Domain Names, without intent for commercial gain. The activities conducted at the Respondent’s website appear to have been commercial in nature, and that rules out any possibility of the Respondent having a right or legitimate interest under paragraph 4(c)(iii) of the Policy.
Those matters are more than sufficient to establish a prima facie case that the Respondent has no rights or legitimate interests in respect of the Domain Names. The evidentiary onus therefore shifts to the Respondent to establish that it does have some right or legitimate interest.
The Respondent has not attempted to do that. The most that has been said by the Respondent, is that it has used the Domain Names to sell T-Mobile’s prepaid minutes. But the Respondent’s website also contained links to websites offering products of the Complainant’s competitors, and such a use could never qualify as a use of the Domain Names in connection with a bona fide offering of goods or services (and so come within the safe harbour of paragraph 4(c)(i) of the Policy). See for example, Shahnaz Husain v. Saxena Dinesh O, WIPO Case No. D2006-1132, where the panel said:
“In addition, in line with consistent WIPO UDRP decisions, the Respondent’s use of the Domain Name to divert internet users to his website and redirect them to other websites, some of which offer for sale the complainant’s direct competitor’s products, presumably receiving compensation for this misdirection, cannot be considered a bona fide use of a domain name as per paragraph 4(c)(iii) of the Policy (See e.g. Lyonnaise de Banque v Richard J; WIPO Case No. D2006-0142, and Motorola Inc v. Mr. Josip Broz; WIPO Case No. D2002-1063)”.
The Shahnaz Husain decision has been followed by the 3-member panel in Provident Financial plc and Another v. Mode h; WIPO Case No. D2007-0149 and also by
this Panel in Sanofi-Aventis v. Abadabq S.A., WIPO Case No. D2006-1611, and in Sanofi-Aventis v. Keyboard Marketing, Inc., WIPO Case No. D2007-0075.
Nor could the Respondent contend that its use of the Domain Names has been legitimate because it has been operating as a reseller of the Complainant’s products. A dealer or reseller who incorporates a trade mark owner’s trade mark in a disputed domain name, will only be regarded as having used the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(iii) of the Policy, if the following conditions are satisfied:
(i) The respondent must actually be offering the goods or services at issue;
(ii) The respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;
(iii) The site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents;
(iv) The respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
(see Oki Data Americas Inc v. ASD Inc, WIPO Case No. D2001-0903).
The factors developed by the Oki Data Americas Inc. panel have been adopted by a number of UDRP panels. (Ferrari S.P.A., Fila Sport S.P.A., v. Classic Jack, WIPO Case No. D2003-0085; Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095), including cases, like this one, where there has been no contractual relationship between the complainant and the respondent. (See Dr. Ing. h.c. F. Porsche AG. v. Del Fabbro Laurent case, WIPO Case No. D2004-0481; Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946).
In this case, the Respondent does not meet the test proposed in the Oki Data Americas Inc case. The Respondent has been using the Domain Names to sell products other than those of the Complainant, and the Respondent’s website does not disclose the Respondent’s relationship with the Complainant (e.g., by providing a prominent disclaimer, advising site visitors that the Respondent has no connection with the Complainant). Furthermore, the Respondent in this case has registered no fewer than 34 “T-Mobile” Domain Names, and that goes far beyond what a legitimate reseller would require (see in that regard Magnum Piering Inc v. Mudjackers, WIPO Case No. D2000-1525, followed by this Panel in Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857).
For the foregoing reasons, the Complainant has sufficiently proved that the Respondent has no rights or legitimate interests in respect of any of the Domain Names.
E. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [the respondent has] registered or 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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.
The Panel is satisfied that all of the Domain Names have been registered and used by the Respondent in bad faith. The Panel has come to that view for the following reasons:
(i) The Domain Names are all confusingly to the Complainant’s T-MOBILE mark, and the Respondent has no rights or legitimate interests in respect of the Domain Names.
(ii) It is obvious that the Respondent was well aware of the Complainant and its TMOBILE mark when it registered the Domain Names. The Complainant’s TMOBILE trade mark is registered in the United States of America where the Respondent is based, and the Complainant was a very substantial player in the United States mobile telecommunications market when the Domain Names were registered in 2007. The Respondent’s website makes it clear that the Respondent has been re-selling the Complainant’s product (the “prepaid minutes”), along with the products of other parties, and the Respondent has clearly been involved in the same general field of business as the Complainant.
(iii) As noted in section 6D of this decision, the Respondent’s use of the Domain Names has not been a use in connection with a bona fide offering of goods or services. The facts which formed the basis for that finding also point to the conclusion that the Respondent’s use of the Domain Names has not been a good faith use. The Respondent has intentionally registered domain names which it knew would be instantly recognizable to thousands of Internet users who were familiar with the Complainant and its products marketed under the T-MOBILE trade mark, in the expectation that many of those Internet users would assume that the Domain Names are either domain names of the Complainant, or are otherwise connected or associated with the Complainant. The Respondent has deliberately ridden on the back of the Complainant’s goodwill in its T-MOBILE mark, in order to generate increased traffic to the Respondent’s website (and so increase the Respondent’s revenue derived through the Respondent’s website). That is, of course, the very kind of bad faith registration and use which is described at paragraph 4(b)(iv) of the Policy.
(iv) Other aspects of the case confirm the Panel’s overall impression of bad faith registration and use. First and most obviously, the Respondent immediately arranged to “take down” the Respondent’s website when it was confronted with the present Complaint. The Respondent also said in its email dated February 21, 2008 that it “understood” the Complainant’s concerns. In the Panel’s view, those actions suggest that the Respondent was not surprised that its use of the Domain Names was being challenged. Secondly, the Respondent’s explanation for the non-receipt of the emails sent by the Complainant’s representative on September 12 and November 5, 2007, (the emails “must have been filtered by our spam software”) is unconvincing. The communications from the Complainant’s representative appear to have been correctly addressed to the email address which the Respondent provided in the Whois particulars for the Domain Names, and, at least without further explanation, it seems to the Panel to be improbable that emails from a firm of lawyers in Germany would have been “filtered” by the Respondent’s spam software.
For all of the foregoing reasons, the Panel is satisfied that the Domain Names have been registered and used by the Respondent in bad faith. There will accordingly be orders transferring the Domain Names to the Complainant.
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 listed in the Schedule to this decision, be transferred the Complainant.
Dated: April 18, 2008
SCHEDULE – DOMAIN NAMES TO BE TRANSFERRED TO COMPLAINANT