Deutsche Telekom AG v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA1810001810886
Complainant is Deutsche Telekom AG (“Complainant”), represented by Thorne Maginnis of Arent Fox LLP, Washington DC, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <t-mobileclaim.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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 9, 2018; the Forum received payment on October 9, 2018.
On October 9, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <t-mobileclaim.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 October 11, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 31, 2018 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-mobileclaim.com. Also on October 11, 2018, 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 5, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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
The Complainant engages in the business of high quality telecommunications products and services, operating in many countries around the world. Complainant has rights in the T-MOBILE trademark through its registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,282,432, registered Oct. 5, 1999). Respondent’s <t-mobileclaim.com> domain name is confusingly similar to Complainant’s trademark as it includes the trademark in its entirety and adds the generic word “claim” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <t-mobileclaim.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the trademark for any purpose.
Respondent registered and uses the <t-mobileclaim.com> domain name in bad faith. Respondent configured the domain name to redirect users to a variety of websites, some of which compete with Complainant, while others contain various hyperlinks. Finally, Respondent registered the domain name with actual or constructive knowledge of Complainant’s rights in the trademark as the trademark is well known and widely advertised in the United States and other countries around the world.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the U.S. trademark registrations
- No. 3,219,515 T-MOBILE (word), registered March 20, 2007, for services in class 42
- No. 3,035,167 T- - MOBILE (fig), registered December 27, 2005, for services in class 36
- No. 2,911,878 T-MOBILE (word), registered December 21, 2004, for goods and services in classes 9, 16, 36, 37, 38, 41 and 42
- No. 2,941,016 T- -MOBILE (fig), registered April 19, 2015, for goods and services in classes 9, 16, 36, 37, 38, 41 and 42
- No. 2,282,432 T-MOBILE (word), registered October 5, 1999, for goods and services in classes 9, 14, 16, 18, 25, 28, 36, 37, 38, 41 and 42
The Respondent registered the <t-mobileclaim.com> domain name on June 11, 2018.
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 will 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 the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.
The Complainant has registered the T-MOBILE trademark with the USPTO (e.g. Reg. No. 2,282,432, registered Oct. 5, 1999).
The Panel finds that registration of a trademark with the USPTO is sufficient to establish rights in a trademark for the purposes of Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
The Panel further finds that the disputed domain name <t-mobileclaim.com> is confusingly similar to Complainant’s trademark as it includes the trademark in its entirety and adds the generic word “claim” and the “.com” gTLD. Similar changes in a registered trademark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). The addition of the generic word “claim”, meaning a formal request or demand, stating that someone owns or has earned something, is definitely not enough to differentiate the disputed domain name from the Complainant’s trademark.
The Panel concludes that the disputed domain name <t-mobileclaim.com> is confusingly similar to the trademark T-MOBILE in which the Complainant has rights (Policy ¶ 4(a)(i)).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See 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.”); see also 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”).
Complainant contends that Respondent has no rights or legitimate interests in the <t-mobileclaim.com> domain name.
Where a response is lacking, WHOIS information may be used to identify a respondent per Policy ¶ 4(c)(ii). The Panel finds that the WHOIS information of record identifies Respondent as “Carolina Rodrigues / Fundacion Comercio Electronico”, with no references to the T-MOBILE trademark. Furthermore, no information of the record indicates that Respondent was authorized to use the Complainant’s T-MOBILE trademark.
The Panel takes these facts as evidence of lacking rights or legitimate interests. 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).
The Complainant argues that Respondent uses the disputed domain name to redirect users to competing websites and websites containing pay-per-click links.
The Panel concludes that using a confusingly similar domain name that resolves in a webpage that competes with a complainant, or contains pay-per-click links, fails to indicate a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy. See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum Feb. 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use).
Therefore, the Panel finds that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).
The Complainant claims that Respondent configured the <t-mobileclaim.com> domain name to redirect users to a variety of websites, some of which compete with Complainant, while others contain various hyperlinks. The Panel agrees that using a disputed domain name that disrupts a complainant’s business and trades upon the goodwill of a complainant for commercial gain is evince bad faith under Policy ¶¶ 4(b)(iii) & (iv). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”).
Finally, Complainant argues that Respondent had actual and constructive knowledge of Complainant’s rights in the T-MOBILE trademark prior to registering the <t-mobileclaim.com> domain name. While constructive notice of a complainant’s trademark is insufficient for a finding of bad faith, actual knowledge of a complainant’s trademark may be evidence of bad faith under Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”).
The fact that Respondent is using the disputed domain name to redirect users to a variety of websites, some of which compete with Complainant, is a clear indication that Respondent had actual knowledge of Complainant’s rights in the trademark prior to registration, thereby supporting a finding of bad faith under Policy ¶ 4(a)(iii).
The Panel concludes that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
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-mobileclaim.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: November 13, 2018
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