Deutsche Telekom AG v. Domain Admin / Whois protection, this company does not own this domain name s.r.o.
Claim Number: FA1710001753347
Complainant is Deutsche Telekom AG (“Complainant”), represented by Thorne Maginnis of Arent Fox LLP, District of Columbia, USA. Respondent is Domain Admin / Whois protection, this company does not own this domain name s.r.o. (“Respondent”), Czech Republic.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tmobilegear.com>, registered with Gransy, s.r.o. d/b/a subreg.cz.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 11, 2017; the Forum received payment on October 11, 2017.
On October 18, 2017, Gransy, s.r.o. d/b/a subreg.cz confirmed by e-mail to the Forum that the <tmobilegear.com> domain name is registered with Gransy, s.r.o. d/b/a subreg.cz and that Respondent is the current registrant of the name. Gransy, s.r.o. d/b/a subreg.cz has verified that Respondent is bound by the Gransy, s.r.o. d/b/a subreg.cz 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 October 20, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 9, 2017 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@tmobilegear.com. Also on October 20, 2017, 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 November 13, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant, Deutsche Telekom AG, is a leading designer of popular, high quality telecommunications products and services. Complainant has rights in the T-MOBILE mark based upon registration with the United State Patent and Trademark Office (“USPTO”) (Reg. No. 2,282,432, registered on Oct. 5, 1999). See Compl. Annex A. Respondent’s <tmobilegear.com> is confusingly similar to Complainant’s T-MOBILE mark as the disputed domain name includes Complainant’s mark in its entirety, less the hyphen, and adds the descriptive term “gear,” along with the generic top-level domain (“gTLD”) “.com.”
Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name. Complainant has not granted Respondent permission or license to use the T-MOBILE mark for any purpose. Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent uses the disputed domain name to redirect Internet users to third party websites as part of a phishing scheme. See Compl. Annex D.
Respondent has registered and used the disputed domain name in bad faith. Respondent attempts to redirect Internet traffic to third party websites soliciting consumers’ personal information in furtherance of a phishing scheme. See Compl. Annex D. Respondent attempts to attract Internet users for commercial gain by creating confusion as to the source sponsorship, affiliation, or endorsement of the disputed domain name. Respondent is engaging in typosquatting. Finally, Respondent had actual knowledge of Complainant’s mark before registering the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a German company that is a leading international telecommunications company and also a designer of popular, high quality telecommunications products and services.
2. Complainant has established its trademarks rights in the T-MOBILE mark based upon its registration of the mark with the United State Patent and Trademark Office (“USPTO”) (Reg. No. 2,282,432, registered on Oct. 5, 1999).
3. Respondent registered the disputed domain name on January 4, 2014.
4. Respondent uses the disputed domain name to redirect Internet users to third party websites as part of a phishing scheme.
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant uses the T-MOBILE mark to provide and market telecommunications-related goods and services. Complainant submits that it has rights in the T-MOBILE mark based upon its registration with the USPTO (Reg. No. 2,282,432, registered on Oct. 5, 1999). See Amend. Annex A. Registration of a mark with the USPTO sufficiently establishes rights in a mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Complainant’s USPTO registrations show it has rights in T-MOBILE mark per Policy ¶ 4(a)(i).
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s T-MOBILE mark. Complainant submits that Respondent’s <tmobilegear.com> domain name is confusingly similar to the T-MOBILE mark, as it contains Complainant’s T-MOBILE mark, less the hyphen, and adds the descriptive word “gear,” along with the gTLD “.com. The addition of a descriptive term does not distinguish a domain name from a mark, and may even increase the confusing similarity of the domain name with the mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark). In the present case, the objective bystander would naturally assume that the domain name related to equipment popularly referred to as “gear” associated with goods and services provided by Complainant under the T-MOBILE mark. Similarly, the addition of a gTLD is irrelevant in determining whether the disputed domain name is confusingly similar. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel agrees with Complainant and finds that the <tmobilegear.com> domain name is confusingly similar to the T-MOBILE mark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s T-MOBILE mark
mark and to use it in its domain name;
(b) Respondent registered the disputed domain name on January 4, 2014;
(c) Respondent uses the disputed domain name to redirect Internet users to third party websites as part of a phishing scheme;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <tmobilegear.com> domain name as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the T-MOBILE mark in any way. The WHOIS information of record identifies Respondent as “Domain Admin” of “Whois protection, this company does not own this domain name s.r.o.” See Compl. Annex C. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). Additionally, lack of evidence in the record to indicate that the respondent had been authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in a disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Therefore, the Panel finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the disputed domain name;
(f) Complainant further argues that Respondent fails to make a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Complainant submits that Respondent is using the <tmobilegear.com> domain name to redirect Internet users to third party websites in furtherance of a phishing scheme. Complainant identifies that consumers are being re-directed to third party pay-per-click and prize-giveaway sites, some of which have solicited consumers’ email and mailing addresses in connection with online surveys and questionnaires. See Compl. Annex D. The use of a disputed domain name to conduct a phishing scheme is not considered a bona fide offering of goods or services. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent lacked rights and legitimate interests in a domain name with which it conducted a phishing scheme to procure “Internet users’ personal information”). Therefore, the Panel finds that Respondent is not using the disputed domain name for a bona fide offering of goods or services, or legitimate non-commercial or fair use of the domain pursuant to Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <tmobilegear.com> domain name in bad faith. Complainant submits that Respondent is attempting to attract Internet users for commercial gain, thereby creating confusion as to Complainant’s sponsorship, affiliation, and/or endorsement of the disputed domain name. Complainant demonstrates that Respondent configured the disputed domain name to redirect Internet traffic to a series of third-party sites, including an online questionnaire site and online survey site, some of which solicited consumers’ personal information. See Compl. Annex D. Respondents who presumably receive click-through or affiliate fees in connection with such prize-giveaway websites are acting in bad faith pursuant to Policy ¶ 4(b)(iv). See Victoria’s Secret Stores Brand Mgmt., Inc. v. Above.com Domain Privacy, FA 1393078 (finding that a domain name which resolves to a website which solicits Internet users for the completion of surveys is evidence of bad faith due to an attraction for commercial gain). Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant Policy ¶ 4(b)(iv).
Secondly, Complainant further argues that Respondent has engaged in typosquatting. Complainant submits that Respondent’s <tmobilegear.com> domain name encompasses Complainant’s entire mark and removes the hyphen, taking advantage of a common typo of the mark. A respondent engaging in typosquatting by registering domain names featuring common spelling errors can evince bad faith registration and use. See Chegg Inc. v. yang qijin, FA1503001610050 (Forum April 23, 2015) (“Users might mistakenly reach Respondent’s resolving website by misspelling Complainant’s mark. Taking advantage of Internet users’ typographical errors, known as typosquatting, demonstrates a respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii).”). Therefore, the Panel finds that Respondent has engaged in bad faith registration and use through the practice of typosquatting.
Thirdly, Complainant argues that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark. Complainant asserts that the T-MOBILE marks are well known and widely advertised around the world. Actual knowledge may be proven through a totality of circumstances surrounding the registration of the disputed domain name. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.) Therefore, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the T-MOBILE mark when it registered the <tmobilegear.com> domain name, thereby supporting a finding of bad faith under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the T-MOBILE mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tmobilegear.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: November 14, 2017
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