Deutsche Telekom AG v. Super Privacy Service LTD c/o Dynadot
Claim Number: FA1809001807241
Complainant is Deutsche Telekom AG (“Complainant”), represented by Thorne Maginnis of Arent Fox LLP, Washington D.C., USA. Respondent is Super Privacy Service LTD c/o Dynadot (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tmobile.co>, registered with Dynadot, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 21, 2018; the Forum received payment on September 21, 2018.
On September 23, 2018, Dynadot, LLC confirmed by e-mail to the Forum that the <tmobile.co> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 September 25, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 15, 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@tmobile.co. Also on September 25, 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 October 19, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant, Deutsche Telekom AG, is a leader in providing mobile communications. Complainant has rights in the T-MOBILE mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,282,432, registered Oct. 5, 1999). Respondent’s <tmobile.co>[i] is confusingly similar to Complainant’s mark as Respondent incorporates the entire T-MOBILE mark and merely removes the hyphen, and adds the “.co” generic top-level domain (“gTLD”).
2. Respondent does not have rights or legitimate interests in the <tmobile.co> domain name. Respondent is not permitted or licensed to use Complainant’s T-MOBILE mark and is not commonly known by the domain name.
3. Respondent has registered and used the <tmobile.co> domain name in bad faith. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the domain name which redirects users to third party websites that compete with Complainant.
4. Moreover, Respondent engages in typosquatting by removing the hyphen in Complainant’s mark.
5. Further, Respondent had actual knowledge or constructive notice of Complainant’s T-MOBILE mark prior to registering the <tmobile.co> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the T-MOBILE mark. Respondent’s domain name is confusingly similar to Complainant’s T-MOBILE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <tmobile.co> domain name and that Respondent registered and uses the domain name 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.”).
Complainant has rights to the T-MOBILE mark based upon registration with the USPTO. Registration with 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). Complainant provides copies of its USPTO registrations for the T-MOBILE mark (e.g., Reg. No. 2,282,432, registered Oct. 5, 1999). Therefore, the Panel finds that Complainant has sufficiently demonstrated its rights in the T-MOBILE mark per Policy ¶ 4(a)(i).
Complainant next claims that Respondent’s <tmobile.co> domain name is confusingly similar to Complainant’s mark. Specifically, Complainant argues Respondent merely removes the hyphen, and adds a gTLD to Complainant’s T-MOBILE mark. Removing a hyphen and adding a gTLD does not negate any confusing similarity between a domain name incorporating the mark of another and the mark itself under Policy ¶ 4(a)(i). See MTD Products Inc v ICS Inc, FA 1721505 (Forum Apr. 18, 2017) (holding that “[t]he removal of the hyphen [from complainant’s TROY-BILT mark in the disputed domain name] is, like most all embedded punctuation, insignificant”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). The Panel agrees with Complainant and finds that the <tmobile.co> is confusingly similar to Complainant’s T-MOBILE mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <tmobile.co> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <tmobile.co> domain name as Respondent is not authorized to use Complainant’s T-MOBILE mark and is not commonly known by the <tmobile.co> domain name. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by a domain name, especially where a privacy service has been engaged, under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.); see also 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 has 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 the 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). The WHOIS information of record identifies Respondent as “Super Privacy Service LTD c/o Dynadot.” The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <tmobile.co> domain name.
The record shows that Respondent uses the <tmobile.co> domain name to redirect Internet users to various third-party websites, including websites that compete with Complainant’s business. Use of a domain name incorporating the mark of another to redirect users to a complainant’s competitors is not be considered to be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Coachella Music Festival, LLC v. josh greenly / All Access Tickets, FA1507001629217 (Forum Aug. 10, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name as required under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), where the respondent was using the disputed domain name to host a web page that featured links to services that competed with those of the complainant); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks). Complainant provides screenshots of the <tmobile.co> domain name’s resolving websites which shows the website for “Verizon Wireless,” one of Complainant’s competitors. Therefore, the Panel holds that the Respondent lacks rights or legitimate interests with respect to the <tmobile.co> domain name pursuant to Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims Respondent registered and uses the <tmobile.co> domain name in bad faith. Complainant has shown that Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the domain name and then redirect users to Complainant’s competitors. Using a confusingly similar domain name which incorporates a complainant’s mark, to disrupt a complainant’s business for commercial gain via competing goods or services shows bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products); see also ShipCarsNow, Inc. v. Wet Web Design LLC, FA1501001601260 (Forum Feb. 26, 2015) (“Respondent’s use of the domain name to sell competing services shows that Respondent is attempting to commercially benefit from a likelihood of confusion.”). Therefore, the Panel holds that Respondent registered and uses the <tmobile.co> domain name in bad faith pursuant Policy ¶¶ 4(b)(iii) and/or (iv).
Next, Complainant contends Respondent engages in typosquatting. Misspelling of a complainant’s mark in order to benefit from a confusing similarity between a domain name and the mark can show 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).”). The Panel agrees and finds that Respondent’s removal of a hyphen in Complainant’s mark constitutes typosquatting, further showing bad faith by Respondent per Policy ¶ 4(a)(iii).
Finally, Complainant argues Respondent must have had actual knowledge of Complainant’s T-MOBILE mark. 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.). Complainant claims that due to Respondent’s use of Complainant’s famous T-MOBILE mark and the fact that Complainant had registered federal trademarks in multiple countries, long before Respondent registered the <tmobile.co> domain name, Respondent had actual knowledge of Complainant’s T-MOBILE mark. Therefore, the Panel agrees that Respondent had actual knowledge of Complainant’s rights in the T-MOBILE mark, constituting bad faith under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied 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 <tmobile.co> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: October 29, 2018
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