T-Mobile USA, Inc. v. gonzales castro pichardo
Claim Number: FA1912001873654
Complainant is T-Mobile USA, Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is gonzales castro pichardo (“Respondent”), Dominican Republic.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <metro-bytmobile.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 3, 2019; the Forum received payment on December 3, 2019.
On December 4, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <metro-bytmobile.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 5, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@metro-bytmobile.com. Also on December 5, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 29, 2019 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims to be the third largest wireless services provider in the United States serving approximately 79.7 million customers and claims ownership of the trademark METRO through its registered trademark described below and rights in the T-MOBILE based on the exclusive license which it holds from the registered owner. Complainant submits that it uses both the METRO and T-MOBILE trademarks in its telecommunications business in the United States.
Complainant argues that the disputed domain name <metro-bytmobile.com> incorporates the METRO and T-MOBILE marks in their entireties, merely adding the generic or descriptive term “by”, moving the hyphen from between T-MOBILE to between METRO and “by”, and adding the most common generic TLD <.com> extension.
Complainant submits that the addition of a descriptive term and a gTLD extension to a mark in order to form a domain name does not distinguish the domain name in an analysis for confusing similarity under Policy ¶ 4(a)(i). See T-Mobile, Inc. d/b/a MetroPCS v Diana Romero/Maurice Mujais/Don Thompson/ Jan L Baptista, FA 1801511 (Forum, Aug. 24, 2018) (finding <metropcsautoswrap.com>, <autoswrapmetropcs.com> and others confusingly similar to the METROPCS trademark).
Complainant adds that Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services nor is Respondent making a noncommercial fair use of the disputed domain name; and as a result, Respondent does not have a legitimate interest in the disputed domain name, as legitimate interests are defined in Paragraphs 4(c)(i)-(iii) of the UDRP.
Complainant also submits that the disputed domain name was registered in bad faith. Complainant argues that bad faith registration can be inferred because the disputed domain name incorporates the METRO and T-MOBILE trademarks in their entireties.
Complainant further submits that Respondent is using the disputed domain in connection with a website that uses the METRO and T-MOBILE trademarks and imagery which is evidence that Respondent is not only familiar with Complainant’s business, but also registered the disputed domain name with knowledge of Complainant’s rights and intended to create an association with Complainant and its products and services.
Complainant submits that the disputed domain name is being used in bad faith. In the annex to the Amended Complaint, Complainant has adduced in evidence a screenshot of the website to which the disputed domain name resolves, which Complainant argues illustrates that the disputed domain name <metro-bytmobile.com> is being used in connection with a phishing site that duplicates the login screen for Complainant’s official site at <metrobyt-mobile.com>. Respondent’s website also uses Complainant’s trademarks and color schemes, and contains a copyright notice that says “© 2002-2019 T-Mobile USA”, Inc.
Furthermore, Respondent’s website contains a login screen for the user to input his or her Metro by T-Mobile phone number, along with their Account PIN. Complainant submits that it is evident that Respondent is attempting to lure consumers into believing that this is an official website of Complainant when it is not, making them comfortable to input their personal information.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a provider of wireless services provider in the United States and has been granted an exclusive license to use the following registered trademarks by the registered owner Deutsche Telekom AG;.
U.S. registered trademark T-MOBILE, registration number 2,282,432 registered on October 5 1999 for goods and services in international classes 9,14, 16 18, 25, 28, 36, 37, 38, 41 and 42.
U.S. registered trademark T-MOBILE, registration number 2,911,878, registered on December 21, 2004 for goods and services in international classes 9, 16 36, 37, 38, 41 and 42.
Complainant is also the owner of a portfolio of registered trademarks including:
U.S. registered trademark METRO, registration number 5,586,381, registered on October 16, 2018 for services in international class 38 for “cellular communications services”.
Complainant maintains a web presence by its websites at at https://www.t-mobile.com> and <https://www.metrobyt-mobile.com> respectively.
The disputed domain name <metro-bytmobile.com> was registered on November 27, 2019 using a privacy service to redact the name of the registrant.
There is no information available about Respondent except for that which is provided in the Amended Complaint, the Registrar’s WhoIs and the information disclosed by the Registrar in response to the Forum’s request for verification of the details of the registration of the disputed domain name. Respondent’s name was disclosed by the Registrar in response to the Forum’s request for verification of the registration of the disputed domain name.
Paragraph 15(a) of the Rules instructs this 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."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has adduced convincing evidence of its ownership of the METRO service mark through its ownership of the abovementioned U.S. trademark registration and its exclusive rights to use the U.S. registered trademark T-MOBILE mark pursuant to the license granted by the registered owner.
Furthermore Complainant has adduced evidence of it rights at common law in both marks acquired through their use on its website in connection with the provision of its mobile telecommunications services in the United States.
The disputed domain name <metro-bytmobile.com> incorporates the METRO and T-MOBILE marks in their entireties, merely adding the generic or descriptive term “by”, moving the hyphen from between T-MOBILE to between METRO and “by”, and adding the gTLD <.com> extension.
The combination of the two trademarks used by Complainant adds to the confusing character of the disputed domain name because it heightens the likelihood that it will be perceived to be associated with Complainant’s business and services.
This Panel finds that the disputed domain name is confusingly similar to both the METRO and T-MOBILE marks in which Complainant has rights. Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing Respondent has never been legitimately known as or referred to as METRO or T-MOBILE or any variation thereof; that Respondent is not commonly known by Complainant’s METRO or T-MOBILE marks as shown in the information about his identity disclosed in the course of this proceeding; that Respondent is not affiliated with Complainant in any way; that Respondent is not licensed by Complainant to use Complainant’s METRO or T-MOBILE marks; that Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services; that Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services; and that Respondent is not making a noncommercial fair use of the disputed domain name.
In such circumstances the burden of production shifts to Respondent to show that he has such rights or legitimate interests. Respondent has failed to deliver a Response or provide any information in the course of this proceeding and has therefore failed to discharge the burden of production.
This Panel finds therefore that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
The disputed domain name is a combination of the two service marks which Complainant lawfully uses in its mobile communications business. It is most implausible that there is any reason which the disputed domain name would have been registered such a distinctive combination of marks except to take predatory advantage of Complainant’s goodwill and reputation.
Complainant has provided convincing, uncontested evidence that the disputed domain name is being used to lure unsuspecting consumers to Respondent’s site by impersonating Complainant and inducing them in bad faith to provide personal data.
This Panel finds therefore on the balance of probabilities tht the disputed domain name was registered and is being used in bad faith.
Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii) and is entitled to the reliefs sought in this proceeding.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <metro-bytmobile.com> domain name be TRANSFERRED from Respondent to Complainant.
_____________________________________
James Bridgeman SC
Dated: December 29, 2019
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