Deutsche Telekom AG v. James Smith
Claim Number: FA1801001766753
Complainant is Deutsche Telekom AG ("Complainant"), represented by Thorne Maginnis of Arent Fox LLP, District of Columbia, USA. Respondent is James Smith ("Respondent"), People's Republic of China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tmobileusainc.store>, registered with Namecheap, Inc.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 12, 2018; the Forum received payment on January 12, 2018.
On January 15, 2018, Namecheap, Inc. confirmed by email to the Forum that the <tmobileusainc.store> domain name is registered with Namecheap, Inc. and that Respondent is the current registrant of the name. Namecheap, Inc. has verified that Respondent is bound by the Namecheap, Inc. 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 19, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 8, 2018 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@tmobileusainc.store. Also on January 19, 2018, the Written Notice of the Complaint, notifying Respondent of the email 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 12, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 has provided telecommunications products and services under the T‑MOBILE mark since 1999. Complainant owns numerous trademark registrations for the word mark T‑MOBILE and related marks in the United States and other countries around the world. Complainant also claims common law rights in the T‑MOBILE marks. Complainant's U.S. subsidiary operates under the name T-Mobile USA, Inc.
Respondent is the registrant of the disputed domain name <tmobileusainc.store>. The disputed domain name was registered on April 14, 2017, and prior to the commencement of this proceeding it was registered in the name of WhoisGuard, a privacy registration service. The domain name is being used for a website that appears to offer mobile phone accessories and other products for sale. Complainant states that Respondent is not commonly known by the T‑MOBILE name or the disputed domain name, and has never been licensed or authorized by Complainant to use its marks.
On these grounds Complainant contends that the disputed domain name is confusingly similar to Complainant's T‑MOBILE mark; that Respondent has no rights or legitimate interests in the disputed domain name, and that the domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
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 disputed domain name <tmobileusainc.store> incorporates Complainant's registered T‑MOBILE mark, omitting the hyphen and adding the generic terms "usa" and "inc" and the ".store" generic top-level domain. None of these alterations substantially diminishes the similarity of the domain name to Complainant's mark. See, e.g., Virgin Enterprises Ltd. v. Adnan Mohammad / Registration Private, Domains By Proxy, LLC, D2016-2472 (WIPO Jan. 31, 2017) (finding <virginmobile.store> identical to VIRGIN MOBILE); Deutsche Telekom AG v. LaPorte Holdings, D2005-0373 (WIPO June 16, 2005) (finding <tmobilusa.com> confusingly similar to T‑MOBILE); Deutsche Telekom AG v. Wray Landreth, D2004-0171 (WIPO May 17, 2004) (finding <t-mobile-inc.com> confusingly similar to T‑MOBILE). Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant's mark.
Under the Policy, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark and corresponds to the name of Complainant's U.S. subsidiary. It is being used for a commercial website that offers products similar to and competitive with those offered by Complainant, in a manner likely to create confusion with Complainant. Such use obviously does not give rise to rights or legitimate interests.
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site 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 [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered and is using a domain name that incorporates Complainant's trademark for a website that creates and exploits confusion with Complainant for the presumed purpose of profiting from the sale of products that compete with those offered by Complainant. This behavior is indicative of bad faith registration and use under paragraphs 4(b)(iii) and 4(b)(iv) of the Policy. See, e.g., Seiko Epson Corp. v. Ravi Singh, FA 1756508 (Forum Dec. 1, 2017) (finding bad faith registration and use where domain name incorporating trademark was used for commercial website promoting directly competing services). Respondent's use of a privacy registration service in an attempt to conceal his identity, though not itself dispositive, is a further indication of bad faith. See id. The Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tmobileusainc.store> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: February 14, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page