Deutsche Telekom AG v. Private Name / ClearCenter
Claim Number: FA2001001881049
Complainant is Deutsche Telekom AG (“Complainant”), represented by Thorne Maginnis of Arent Fox LLP, United States. Respondent is Private Name / ClearCenter (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <t-mobile.center>, <t-mobile.domains>, <t-mobile.international> and <t-mobile.network>, registered with Google 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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 29, 2020. The Forum received payment that day.
On January 29, 2020, Google LLC confirmed by e-mail to the Forum that the <t-mobile.center>, <t-mobile.domains>, <t-mobile.international> and
<t-mobile.network> domain names (“the Domain Names”) are registered with Google LLC and that Respondent is the current registrant of the Domain Names. Google LLC has verified that Respondent is bound by the Google 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 January 31, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 20, 2020 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@t-mobile.center, postmaster@t-mobile.domains, postmaster@t-mobile.international and postmaster@t-mobile.network. Also on January 31, 2020, 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 February 25, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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 Domain Names be transferred from Respondent to Complainant.
A. Complainant
Since 1999 Complainant has been a leading designer of popular, high quality telecommunications products and services. The Domain Names are identical or confusingly similar to Complainant’s well-known T-MOBILE mark, registered around the world.
Respondent lacks rights or legitimate interests in the Domain Names. Respondent is not commonly known by those names and is not a licensee nor authorized to use Complainant’s mark. Each of the Domain Names resolves to an inactive webpage stating “This site can’t be reached.”
Respondent registered and is using the Domain Names in bad faith in that Respondent has registered multiple domain names incorporating Complainant’s T-MOBILE mark, each of which resolves to an inactive webpage. Also, Respondent uses a privacy shield to conceal its identity. Finally, Respondent must have had actual knowledge of Complainant’s rights in the T-MOBILE mark prior to its registration of the Domain Names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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 the Domain Names should be cancelled or transferred:
(1) the Domain Names registered by Respondent are 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 Names; and
(3) the Domain Names have been registered and are 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 demonstrated that it has rights in the T-MOBILE mark through numerous registrations, including with the United States Patent and Trademark Office (e.g. Reg. No. 2,282,432 registered on Oct. 5, 1999).
Each of the Domain Names, <t-mobile.center>, <t-mobile.domains>, <t-mobile.international> and <t-mobile.network>, comprises Complainant’s T-MOBILE mark in its entirety, followed by a generic top-level domain (“gTLD”). The addition of a gTLD to a mark is generally regarded as inconsequential in relation to the likelihood of confusion analysis. See, e.g., Sears Holdings Corporation v David Rahmany / Dme / N Rahmany, Case No. 1618201 (Forum June 8, 2015).
In the present case, each of the different gTLDs describes Complainant’s business, thereby conveying to Internet users the impression that the Domain Names belong to Complainant. Accordingly, the Panel finds that each of the Domain Names is identical or confusingly similar to Complainant’s T-MOBILE mark.
Complainant has established this element.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or 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; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the Domain Names, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The Panel finds that the T-MOBILE mark is distinctive and widely known. Complainant’s assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the Domain Names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the Domain Names. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Respondent has made no attempt to do so.
In the circumstances of this case, the Panel finds that Respondent has no rights or legitimate interests in respect of the Domain Names.
Complainant has established this element.
(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 trademark 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 trademark 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 its 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 its website or location.
For the following reasons the Panel finds that Respondent registered and is using the Domain Names in bad faith pursuant to Policy 4(a)(iii):
(a) Respondent registered each of the Domain Names on the same day, March 31, 2017 and also on that day registered the domain names <t-mobile.education> and <t-mobile.university>, both of which recently expired and were acquired by Complainant. A respondent’s registration of multiple domain names using a complainant’s mark has been held to evince bad faith pursuant to Policy ¶ 4(b)(ii). See United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (“Complainant contends that Respondent is a serial cybersquatter as evidenced by its registering four separate domain names all incorporating Complainant’s USPS mark. Therefore, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(ii).”);
(b) each of the Domain Names resolves to an inactive webpage stating “This site can’t be reached”. Such inactive holding of a domain name has been held to be evidence of bad faith pursuant to Policy ¶ 4(a)(iii). See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”);
(c) Respondent’s use of the well-known T-MOBILE mark in multiple domain names is evidence of Respondent’s knowledge of Complainant’s rights in the T-MOBILE mark prior to its registration of the Domain Names. See United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (finding Respondent had actual knowledge of Complainant’s rights in the USPS mark “given the widespread use of Complainant’s mark and the fact that Respondent registered four separate domain names all of which include Complainant’s USPS mark in its entirety”); and
(d) Respondent’s use of a privacy service to conceal its identity is evidence of bad faith under the Policy. National Cable Satellite Corporation d/b/a CSPAN v. New Media Nexus c/o Lyle, Rumble, NAF Case FA0811001236010 (Jan. 26, 2009) (“The Panel finds that Respondent engaged in bad faith registration and use by utilizing a proxy service to conceal its true identity”).
Complainant has established this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <t-mobile.center>, <t-mobile.domains>, <t-mobile.international> and <t-mobile.network> domain names be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: March 3, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page