Deutsche Telekom AG v. Dana Dudones
Claim Number: FA1807001798440
Complainant is Deutsche Telekom AG (“Complainant”), represented by Thorne Maginnis of Arent Fox LLP, District of Columbia, USA. Respondent is Dana Dudones (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <t-moblewirelles.com>, <tmobillewireless.com>, <tmobile-wirreless.com>, <tmobile-wireless.com>, <tmobilewiirelss.com>, <tmobileswireless.com>, and <t-mobiewireless.com>, registered with 1&1 Internet Se.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 25, 2018; the Forum received payment on July 25, 2018.
On July 26, 2018, July 27, 2018, July 30, 2018, and August 6, 2018, 1&1 Internet Se confirmed by e-mail to the Forum that the <t-moblewirelles.com>, <tmobillewireless.com>, <tmobile-wirreless.com>, <tmobile-wireless.com>, <tmobilewiirelss.com>, <tmobileswireless.com>, and <t-mobiewireless.com> domain names are registered with 1&1 Internet Se and that Respondent is the current registrant of the names. 1&1 Internet Se has verified that Respondent is bound by the 1&1 Internet Se 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 August 13, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 4, 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-moblewirelles.com, postmaster@tmobillewireless.com, postmaster@tmobile-wirreless.com, postmaster@tmobile-wireless.com, postmaster@tmobilewiirelss.com, postmaster@tmobileswireless.com, and postmaster@t-mobiewireless.com. Also on August 13, 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 September 6, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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
Complainant states that it provides high quality telecommunications products and services, in particular mobile telephony, as well as related goods and services, including a variety of T-MOBILE-branded consumer goods. Complainant registered the T-MOBILE mark in the United States in 2007.
Complainant alleges that the disputed domain names are confusingly similar to its T-MOBILE mark as each wholly incorporates the mark (with some minor misspellings) minus the included hyphen, with the addition of additional hyphens, the descriptive term (sometimes misspelled) “wireless” that relates to Complainant’s business, and the “.com” generic top-level-domain (“gTLD”).
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as, instead, Respondent uses the disputed domain names to redirect Internet users websites that are entirely inactive, or contain pay-per-click advertising to competing products and services, or offer the domain name for sale. In addition, the <tmobile-wirreless.com> domain name has been identified by Complainant as being used in connection with a phishing scheme.
Further, says Complainant, Respondent registered and uses disputed domain names in bad faith. Some of the disputed domain names resolve to parking pages containing pay-per-click advertisements for Respondent’s commercial gain; some are inactive; some offer the domain name for sale. Respondent uses the <tmobile-wirreless.com> domain name in connection with a phishing scheme. Respondent uses a WHOIS privacy service to shield its true identity. Respondent had actual knowledge of Complainant’s rights in the T-MOBILE marks prior to registration of the disputed domain names. Respondent engages in typosquatting by registering and using numerous domain names that take advantage of common misspellings or a typo of Complainant’s T-MOBILE mark. Respondent engages in a pattern of cybersquatting as evidence by the registration of no less than seven domain names that incorporate Complainant’s T-MOBILE mark or obvious misspellings of it.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark T-MOBILE and uses it to market mobile telephony products and services. The mark is well known.
Complainant’s rights in its marks date back to at least 2007.
The disputed domain names were registered on June 2 and 3, 2018.
Complainant has not licensed or otherwise authorized Respondent to use its marks.
Some of the disputed domain names resolve to webpages containing pay-per-click advertisements, including to competing products and services; some are inactive. One was used in connection with 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 disputed domain names are confusingly similar to Complainant’s mark as each wholly incorporates the mark (with some minor misspellings) minus the included hyphen, with the addition of additional hyphens, the descriptive term (sometimes misspelled) “wireless” that relates to Complainant’s business, and the “.com” generic top-level-domain (“gTLD”). The addition/removal of hyphens, misspelling of a complainant’s mark, addition of generic/descriptive terms and appending a gTLD may result in a finding that the disputed domain name is confusingly similar to the mark in question per Policy ¶ 4(a)(i). See Twitch Interactive, Inc. v. zhang qin, FA 1626511 (Forum Aug. 4, 2015) (“The relevant comparison then resolves to the trademark, TWITCH, with the term, ‘titch,’ which, as can be readily seen, merely removes the letter ‘w’ from the trademark. In spite of that omission the compared integers remain visually and aurally very similar and so Panel finds them to be confusingly similar for the purposes of the Policy.”); Blizzard Entertainment, Inc. v. XINXIU ZENG / haimin liang, FA 1736365 (Forum July 19, 2017) (finding that the addition of punctuation—specifically, a hyphen—did not sufficiently distinguish the disputed domain name from complainant’s registered mark); YETI Coolers, LLC v. Randall Bearden, FA 16060016880755 (Forum Aug. 10, 2016) (finding that the words “powder coating” in the <yetipowdercoating.com> domain name are “merely explicative and directly refer to some of the services rendered by the Complainant” and, therefore, create an “irrefutable confusing similarity” to complainant’s YETI mark); Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.). Thus the Panel finds the disputed domain names to be confusingly similar to Complainant’s T-MOBILE mark per Policy ¶ 4(a)(i).
Complainant has not authorized Respondent to use the T-MOBILE mark in any way. Respondent is not commonly known by the disputed domain names: where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Here, the WHOIS information of record identifies Respondent as “Dana Dudones.” The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the disputed domain names.
Some of the disputed domain names redirect users to a website that lacks any content. Failure to make active use of a confusingly similar domain name can evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. v. Cimpress Schweiz GmbH, FA 1737429 (Forum Aug. 3, 2017) (“Complainant insists that Respondent has made no demonstrable preparations to use the disputed domain name. When Respondent is not using the disputed domain name in connection with an active website, the Panel may find that Respondent is not using the disputed domain name for a bona fide offering of goods or services… As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.”). The Panel therefore finds that Respondent has failed to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) for these domain names.
Some of the disputed domain names host, or formerly hosted, pay-per-click links for Respondent’s commercial gain, including to products and services which compete with those of Complainant. Use of a disputed domain name to host pay-per-click links for commercial gain may not evince rights and legitimate interests in said domain name per Policy ¶¶ 4(c)(i) & (iii). See TGI Friday’s of Minnesota, Inc. v. Tulip Company / Tulip Trading Company, FA 1691369 (Forum Oct. 10, 2016) (“Respondent uses the domain for a parking page displaying various links that consumers are likely to associate with Complainant, but that simply redirect to additional advertisements and links that divert traffic to third-party websites not affiliated with Complainant… The Panel here finds that Respondent is not using the domain name in connection with a bona fide offering of goods or services.”). Accordingly, the Panel finds that Respondent has failed to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) for these domain names.
Some of the disputed domain names resolve to a website that offers them for sale. This may not be a bona fide offering of goods or services under, or a legitimate noncommercial or fair use. See loanDepot.com, LLC v. sm goo, FA 1786848 (Forum June 12, 2018) (“Respondent has failed to make any active use of the< mellosolar.com> domain name since it was registered, with the exception that the domain name is employed by Respondent to solicit offers to purchase it. Such substantively inactive use is, in the circumstances described in the Complainant, neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy.”); see also Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶4(a)(ii).”). Accordingly, the Panel finds that Respondent has failed to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) for these domain names.
The <tmobile-wirreless.com> domain name is used to attempt to phish for information from consumers via email. Specifically, Complainant provides an email sent from the disputed domain name seeking payment. This evinces a lack of any bona fide offering of goods or services or legitimate noncommercial or fair use. See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Again, the Panel finds that Respondent has failed to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) for this domain name.
For all the above reasons, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain names.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s well-known mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names.
Indeed, Respondent registered the disputed domain names in bad faith by engaging in a pattern of cybersquatting: the registration of multiple confusingly similar domain names incorporating a complainant’s mark can demonstrate bad faith registration. Here the same registrant registered the seven disputed domain names over a two-day period. See Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum Nov. 7, 2013) (finding that the respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii)). Thus the Panel finds that Respondent’s registration of multiple domain names in the present case evinces bad faith registration under Policy ¶ 4(b)(ii).
In addition, Respondent engaged in typosquatting: the disputed domain names each take advantage of misspelling Complainant’s T-MOBILE mark. A finding of typosquatting can evince bad faith under Policy ¶ 4(a)(iii). See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Respondents who capitalize on common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii).”). Thus the Panel finds that Respondent registered and is using the disputed domain names in bad faith on this ground also.
Further, as already noted, Respondent commercially benefitted (or currently benefits) by offering advertisements on the resolving webpage for some of the disputed domain names. Commercially benefitting by offering advertisements can evince bad faith registration and use under Policy ¶ 4(b)(iv). See Google Inc. v. James Lucas / FireStudio / Jameschee / FIRESTUDIO / SEONG YONG, FA1502001605757 (Forum April 7, 2015) (“This Panel agrees that Respondent’s inclusion of advertisements to likely reap click-through fees is an example of bad faith pursuant Policy ¶ 4(b)(iv).”). Accordingly, the Panel finds that Respondent acted in bad faith when registering and using those disputed domain name.
Further, also as already noted, some of the disputed domain names are not being used. According to paragraph 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Jurisprudential Overview 3.0): “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”
In the present case, Complainant’s trademark is well known. It is difficult to envisage any use of the disputed domain name that would not violate the Policy, see Morgan Stanley v. TONY / shentony, FA 1637186 (Forum Oct. 10, 2015) (“Respondent registered the disputed domain name [MORGANSTANLEY.ONLINE] in bad faith because . . . it is difficult to envisage any use of the disputed domain name that would not violate the Policy”); see also Singapore Airlines Ltd. v. European Travel Network, D2000-0641 (WIPO Aug. 29, 2000) (where selection of disputed domain name is so obviously connected to complainant’s well-known trademark, use by someone with no connection with complainant suggests opportunistic bad faith); see also Starwood Hotels & Resorts Worldwide, Inc., Sheraton Int’l IP, LLC, Westin Hotel Mgmt., L.P. v. Jingjing Tang, D2014-1040 (WIPO Aug. 19, 2014) (“The Panel finds that the [WESTIN] Marks are not such that could legitimately be adopted by traders other than for the purpose of creating an impression of an association with Complainant. Thus, the Panel concludes that the disputed domain names were registered in bad faith”).
There has been no response to the Complaint. A privacy service was used, that is, Respondent concealed its identity. Given these circumstances, the Panel finds that, in this particular case, a finding of bad faith use can be inferred even though some of the disputed domain names are not being actively used. See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
Still further, and again as already noted, Respondent offered to sell some of the disputed domain names. This can be evidence of bad faith under Policy ¶ 4(b)(i). See Staples, Inc. v. lin yanxiao, FA1505001617686 (Forum June 4, 2015) (“Respondent’s offering to sell the disputed domain name to a third party (in this case, the general public) supports a finding of bad faith registration and use.”); Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).
Finally, as already noted, Respondent uses the <tmobile-wirreless.com> domain name to fraudulently send emails to Complainant’s customers in hopes of receiving personal or financial information. Conducting a phishing scheme through fraudulent email communications can evince bad faith under Policy ¶ 4(a)(iii). See Zoetis Inc. and Zoetis Services LLC v. VistaPrint Technologies Ltd, FA1506001623601 (Forum July 14, 2015) (“Respondent’s attempt to use the <zoietis.com> domain name to phish for personal information in fraudulent emails also constitutes bad faith pursuant to Policy ¶ 4(a)(iii).”). Therefore the Panel finds that Respondent registered and is using this domain name in bad faith per 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-moblewirelles.com>, <tmobillewireless.com>, <tmobile-wirreless.com>, <tmobile-wireless.com>, <tmobilewiirelss.com>, <tmobileswireless.com>, and <t-mobiewireless.com> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: September 7, 2018
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