WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Deutsche Telekom AG v. Mr. Ben Anderrson
Case No. D2005-1268
1. The Parties
The Complainant is Deutsche Telekom AG, Bonn, Germany, represented by Lovells, attention of Dr. Matthias Koch, Munich, Germany.
The Respondent is Mr. Ben Anderrson, Bonn, Germany.
2. The Domain Names and Registrar
The disputed domain names <t-online-business-de.com> and <t-online-de-homepage.com> are registered with CSL Computer Service Langenbach GmbH d/b/a Joker.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2005. On December 8, 2005, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba Joker.com, a request for registrar verification in connection with the domain name at issue. On December 9, 2005, CSL Computer Service Langenbach GmbH dba Joker.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 December 12, 2005. In accordance with the Rules, paragraph 5(a), the due date for a response was January 1, 2006. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 3, 2006.
The Center appointed Stefan Naumann as the Sole Panelist in this matter on January 20, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The languages of the Registration Agreement are German and English. In conformity with the Rules, paragraph 11(a), the language of the administrative proceeding may be English or German. The Registrar and the Complainant are domiciled in Germany. The Whois search results submitted into evidence by Complainant show that Respondent indicates as country “SE” together with an address in Germany. The address provided by Respondent to the Registrar is in fact that of Complainant’s offices. Prior to commencement of the present administrative proceeding, the Registrar wrote an email to Respondent in English informing him that the Registrar had received a complaint about the domain name <t-online-business-de.com>. Complainant sent Respondent by email two letters in English regarding the domain names <t-online-business-de.com> and <t-online-de-homepage.com> and filed a complaint in English.
Respondent’s failure to reply could be due to a lack of understanding of English. However, in such a situation Respondent could have informed his Registrar that he wishes to communicate in German only, rather than failing to react to the emails he received first from the Registrar, then from the Complainant’s counsel and ultimately from the Center.
Absent any observations by Respondent regarding a preference among the two possible languages in which the administrative proceeding can be conducted, the Panel is satisfied that the proceeding may be conducted in English.
4. Factual Background
Complainant declares that it is Europe’s largest telecommunications company and that it continuously drives ahead the internationalization of the Deutsche Telekom Group through strategic shareholdings. It appears from the evidence submitted by Complainant that it is represented “in about 50 countries on all six continents”.
Complainant owns the following three trademarks amongst others:
- Community trademark T-ONLINE (number 214 528) filed on April 1, 1996, and currently registered;
- German trademark T-ONLINE (number DE 395 39 437) filed on September 27, 1995, renewed on October 1, 2005, and currently registered;
- international trademark T-ONLINE (number 650 171) filed on November 8, 1995, and registered with a priority date of September 27, 1995, (number DE 395 39 437) designating numerous countries other than Germany.
All three trademarks designate products and services in classes 9, 16, 36, 37, 38, 41 and 42.
Complainant submitted database print-outs for these trademarks.
Complainant asserts that its trademarks are famous, without providing any information or evidence in support of this assertion.
Complainant further declares that it has registered over 200 top level domain names with the term “t-online” and has submitted eleven print-outs for the domain names <Tonline.info>, <Tonline.org>, <T-online.biz>, <T-online.info>, <Tonline.biz>, <Tonline.org>. The Panel notes that the domain name <Tonline.info> is registered in the name of Ms. Zobel and that a number of the print-outs indicate that the registrant is a company named T-Online International AG. Although Complainant states that T-Online International AG is a subsidiary of Complainant, it does not provide any meaningful evidence in support of this assertion, and T-Online International AG is not a party to the present administrative proceeding.
On March 22, 2005, Respondent registered the domain names <t-online-business-de.com> and <t-online-de-homepage.com>. On August 26, 2005, the Registrar wrote to Complainant that the domain name <t-online-de-hompage.com> does not exist. The Panel notes that this statement by the Registrar may be the result of a typographical error (“hompage” instead of “homepage”). Complainant submitted screen print-outs dated October 27, 2005, showing that the connection to <t-online-de-homepage.com> failed, and that the connection to the domain name <t-online-business-de.com> results in an error message indicating that the domain name does not exist.
Before commencing the present administrative proceedings, Complainant sent Respondent two demand letters by email. Copies of the emails and the letters were submitted into evidence. As Respondent has provided as physical address the address of Complainant, Respondent could not be reached except by email.
5. Parties’ Contentions
Complainant argues that Respondent’s domain names are confusingly similar to Complainant’s T-ONLINE trademarks and that the addition of the common or descriptive terms “business”, “de” and “homepage” do not influence an assessment of similarity. According to Complainant, Respondent has no rights or legitimate interest in the domain names <t-online-de-homepage.com> or <t-online-business-de.com> because Respondent has not and cannot possibly demonstrate any of the circumstances enumerated under article 4(c) of the Policy. In particular, the domain names are not used for a good faith offering of goods or services, Respondent was not known by the name T-ONLINE prior to the registration of the domain names, and Respondent is not authorized or licensed to use Complainant’s trademarks.
Complainant further alleges that Respondent registered the domain names in bad faith because he was necessarily aware of the particular fame of Complainant’s trademarks.
As regards the bad faith use requirement, Complainant concedes that Respondent does not use the disputed domain names. Complainant argues that inaction can, under prevailing UDRP panel decisions, constitute a form of bad faith use depending on the particular facts of a specific case. Complainant argues that in the present case, (i) Respondent has not provided evidence of actual or contemplated good faith use, (ii) there exists a strong risk that Respondent will use the domain names to advertise products or services that compete with those of Complainant’s subsidiary, (iii) Respondent has provided contact details in the Whois record in breach of its registration agreement, and (iv) he has not reacted to Complainant’s attempts to contact him.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Complainant has established that it has acquired trademark rights in the term “T-Online” and that these rights are prior to the registration of the litigious domain name.
The prior rights in the term “T-Online” as trade name, corporate name and/or as domain name by the company T-Online International AG cannot be relied upon by Complainant itself insofar as Complainant does not submit any evidence to establish that the other legal entity is part of the same group of companies, or that Complainant itself has rights in the T-ONLINE trade name, corporate name and/or domain names belonging to T-Online International AG and/or Ms. Zobel.
Because Complainant does not demonstrate that it owns rights in the term “T-Online” beyond the trademarks themselves, the Panel does not need to reach the issue of the relevance of these other intellectual property rights and domain names in administrative proceedings under the Rules, other than to establish whether a trademark is well-known.
This being said, in order to prevail in the present proceeding, Complainant does not need to establish that T-ONLINE is also used as trade name, corporate name and/or domain name by another company within the group of companies. Likewise, the Panel does not need to reach a conclusion as to whether T-ONLINE is a well-known trademark in order to reach its decision in the present matter.
A. Identical or Confusingly Similar
Under general trademark law principles, the addition of common or descriptive terms to a distinctive sign does not diminish the risk of confusion. In the present matter, Respondent added “business-de” and “de-homepage” to the term “t-online”, which is identical to the Complainant’s trademarks.
The Panel agrees with Complainant that the domain names <t-online-de-homepage.com> and <t-online-business-de.com> are confusingly similar to Complainant’s T-ONLINE trademarks, and considers that the addition of the descriptive terms “de”, “homepage”, and/or “business” does not diminish the distinctiveness of the term “T-Online” within the disputed domain names. In this context, the Panel considers that the letters “de” in the litigious domain names would be considered to refer to or stand for Germany (Deutschland) at least for a significant number of consumers whose native tongue is German or who live in or near Germany.
The Panel therefore finds that the domain names <t-online-de-homepage.com> and <t-online-business-de.com> are confusingly similar to Complainant’s T-ONLINE trademarks.
B. Rights or Legitimate Interests
In order to establish that he has legitimate rights in the domain names <t-online-de-homepage.com> and <t-online-business-de.com>, Respondent could attempt to demonstrate his preparations to use, or actual use of one or both domain names, or of a name corresponding to the domain names, in connection with a bona fide offering of goods or services, or that he has been commonly known by the domain names or is making a legitimate non-commercial or fair use thereof without intent of commercial gain and without misleadingly diverting consumers or tarnishing the trademarks.
In the present matter, Respondent has chosen not to file a response, and the Panel has found no indication in the evidence it received that any of the circumstances described in the Policy, paragraph 4(c)(i)-(iii) could apply in the present matter. Nor has Respondent claimed or demonstrated any other circumstances that could demonstrate his or her rights to or legitimate interest in the litigious domain names. As Respondent has not replied to the Registrar’s notification of August 1, 2005, nor to the Complainant’s demand letters of October 7 and 18, 2005, the Panel considers that Respondent’s choice not to submit a Response in the present matter may have been deliberate or, at least, that Respondent does not have any arguments or evidence that, in his opinion, would constitute circumstances demonstrating his right or legitimate interest in the domain names <t-online-de-homepage.com> and <t-online-business-de.com>.
The Panel therefore finds that the Respondent has no right or legitimate interest in the domain names <t-online-de-homepage.com> and <t-online-business-de.com>.
C. Registered and Used in Bad Faith
For Complainant to prevail, the Panel must be persuaded that the domain names at issue were registered and used in bad faith.
In the present matter, the use of the term “T-Online” in two separate “.com” domain names and the combination within the domain names of that term with the terms “business-de” and “de-homepage” tend to indicated that Respondent knew of Complainant’s trademarks and online business in Germany. The fact that the T-ONLINE trademarks, in addition, appear on Complainant’s website strengthen the impression that Respondent acted in bad faith when registering the two litigious domain names.
The Panel therefore concludes that Respondent registered the domain names <t-online-business-de.com> and <t-online-de-homepage.com> in bad faith.
Although Respondent is apparently not using the domain names in any manner whatsoever, he has decided, after receiving notice of a possible complaint from the Registrar and two demand letters from Complainant’s counsel, to keep the two domain names.
In addition, Respondent has used Complainant’s address in the registrations, thus strengthening the impression, for a person carrying out a Whois search, that the domain names in fact belong to Complainant, and that the error messages that are sent when one attempts to connect to the domain names can be attributed to Complainant’s mistake or lack of know-how.
The Panel finds that the decision to maintain ownership of inactive domain names that were registered in bad faith constitutes an act of bad faith use where, as is the case here, Respondent’s ongoing ownership of the inactive domain names without any legitimate interest may damage or tarnish the reputation of Complainant and of its trademarks.
The Panel therefore finds that bad faith use under paragraph 4(a)(iii) is also present in this matter.
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the domain names <t-online-de-homepage.com> and <t-online-business-de.com> be transferred to the Complainant.
Dated: February 3, 2006