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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Deutsche Telekom AG v. Unitedeurope Consulting

Case No. D2006-0930

 

1. The Parties

The Complainant is Deutsche Telekom AG, of Bonn, Germany, represented by Lovells, Germany.

The Respondent is Unitedeurope Consulting, of Gwangju, Republic of Korea, represented by Dongsuh International Law Offices, Republic of Korea.

 

2. The Domain Names and Registrar

The disputed domain names <t-biz.com>, <t-box.com>, <t-broadcast.com>, <t-city.com>, <t-health.com>, <t-home.com>, <t-jobs.com>, <t-network.com>, <t-portal.com>, <t-sales.com>, and <t-show.com> are registered with Korea Information Certificate Authority Inc. d/b/a DomainCa.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2006. On July 23, 2006, the Center transmitted by email to Korea Information Certificate Authority Inc. d/b/a DomainCa.com a request for registrar verification in connection with the domain names at issue. On July 25, 2006, Korea Information Certificate Authority Inc. d/b/a DomainCa.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 16, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was September 5, 2006. Upon the Respondent’s request for an extension to file the Response and considering the Complainant’s consent to this request, the Center extended the Response due date to September 8, 2006. The Response was filed with the Center on September 7, 2006.

The Center appointed Ik-Hyun Seo, Boh Young Hwang, and Sang Jo Jong as panelists in this matter on October 30, 2006. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On November 27, 2006, the Panel issued a Panel Order requesting the Complainant to submit:

“1. An English translation of the German language trademark documents included as part of Annex G to the Complaint.

2. Details surrounding Complainant’s actual use of each of the asserted trademarks, including but not limited to the date of first use, nature and extent of use, related publicity, etc., as well as sufficient supporting evidence thereof.”

The Respondent was given the opportunity to respond to the Complainant’s submission and the decision due date was extended to December 25, 2006. The Complainant filed a submission to the Panel Order on December 4, 2006. No submissions were received from the Respondent.

 

4. Factual Background

The Complainant is Deutsche Telekom AG, Europe’s largest telecommunications company. The Complainant provides telecommunication services under its T-MOBILE brand, as well as other services under its T-[descriptive] family of marks. The Complainant holds various trademark registrations for T-[descriptive] marks in Europe as well as other parts of the world.

The Respondent, Unitedeurope Consulting, appears to be a Korean entity.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are identical or confusingly similar to trademarks in which the Complainant has rights. More specifically, the Complainant asserts its trademark registrations for T-BIZ, T-BOX, T-CITY, T-HOME, T-JOBS, T-NETWORK, T-HEALTH, T-PORTAL and T-SALES, specifically, which correspond identically with nine of the disputed domain names. Also, the Complainant asserts that it has trademark rights in the construction T-[descriptive term], also supported by its Community Trademark registration for T.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names. More specifically, the Complainant asserts that the Respondent has not used any of the disputed domain names in connection with a bona fide offering of goods and services, noting that the disputed domain names have only been used in connection with domain name parking services. The Complainant further asserts that the Respondent is not commonly known by any of the disputed domain names, nor has the Respondent made a legitimate non-commercial or fair use of the disputed domain names.

Finally, the Complainant contends that the Respondent registered and is using the disputed domain names in bad faith. In support, the Complainant asserts: (1) the Respondent has engaged in a pattern of bad-faith conduct as demonstrated by the eleven disputed domain names; (2) the Respondent is familiar with Germany and hence, the Complainant; (3) and the Respondent has registered and abused additional domain names that infringe well-known trademarks of third parties.

B. Respondent

The Respondent contends that Complainant’s T trademark registration should not be considered in these proceedings. More specifically, the Respondent asserts that such a single letter trademark would not be permitted registration in the Republic of Korea, and is already in use by others in the Republic of Korea. Further, T is a simple and common acronym for telecommunications, telephone, television, etc.

The Respondent contends that it has a right or legitimate interest in the disputed domain names. The Respondent asserts that it has been preparing for various businesses, and that the disputed domain names were obtained in connection with such preparations. The Respondent further asserts that its use of the disputed domain names in connection with domain name parking services in the meantime establishes its rights and legitimate interests in the disputed domain names.

The Respondent contends that there was no bad faith involved in its use or registration of the disputed domain names. More specifically, the Respondent denies any knowledge of the Complainant’s trademarks when it obtained the disputed registrations. Further, with respect to the Complainant’s trademark registrations corresponding to <t-health.com>, <t-portal.com> and <t-sales.com>, the Respondent notes that its domain name registrations predate the Complainant’s trademark registrations, undermining any assertions of bad faith with respect to these.

 

6. Discussion and Findings

Language of the Proceedings

The default language of the proceedings is Korean, as the actual registration agreements for the disputed domain names were in Korean. To ensure fairness and efficiency, the Parties were permitted to make submissions in their preferred languages – the Complainant in English and the Respondent in Korean. However, given the circumstances of this case, the Panel believes it would be more appropriate to render its decision in English for the reasons provided below.

First, the disputed domain names were used by the Respondent to display content and links completely in the English language. Further, the disputed domain names were linked to “www.trafficz.com”, a U.S. based domain name parking service. As “www.trafficz.com” provides information only in English and also requires their agreements to be executed in English, it appears that the Respondent has an adequate command of the English language. This is also supported by the record of communications in English between the Parties before these proceedings were commenced. On the other hand, it appears that neither the Complainant nor its attorneys have any ability to communicate in Korean.

A. Identical or Confusingly Similar

In the present proceedings, the disputed domain names can be grouped into the following three categories:

Group A consists of six domain names: <t-biz.com>, <t-box.com>, <t-city.com>, <t-home.com, <t-jobs.com> and <t-network.com>. Group B consists of three domain names: <t-health.com>, <t-portal.com> and <t-sales.com>. Finally, Group C consists of two domain names: <t-broadcast.com> and <t-show.com>.

With respect to Group A, the Complainant has submitted evidence of trademark registrations that exactly correspond with the substantive portions of the disputed domain names: <t-biz.com> (Complainant’s T-BIZ trademark registration), <t-box.com> (Complainant’s T-BOX trademark registration), <t-city.com> (Complainant’s T-CITY trademark registration), <t-home.com> (Complainant’s T-HOME trademark registration), <t-jobs.com> (Complainant’s T-JOBS trademark registration), and <t-network.com> (Complainant’s T-NETWORK trademark registration). For these six domain names, the domain names are identical to the Complainant’s trademark registrations, which trademarks the Panel notes were all registered prior to the Respondent’s registration date for the corresponding domain names. For these, there is little room to deny that the requirements of Paragraph 4(a)(i) have been satisfied.

With respect to Group B, the Complainant has asserted trademark registrations that again are identical in construction to the three disputed domain names: <t-health.com> (Complainant’s T-HEALTH trademark registration), <t-portal.com> (Complainant’s T-PORTAL trademark registration) and <t-sales.com> (Complainant’s T-SALES trademark registration). The asserted trademark registrations were all registered after the registration dates of the three corresponding domain names. With regard to this, the Panel refers to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, section 1.4:

Consensus view: Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity. The UDRP makes no specific reference to the date of which the owner of the trade or service mark acquired rights. However it can be difficult to prove that the domain name was registered in bad faith as it is difficult to show that the domain name was registered with a future trademark in mind.

Relevant decisions:

Digital Vision, Ltd. v. Advanced Chemill Systems D2001-0827, Denied
AB Svenska Spel v. Andrey Zacharov D2003-0527, Transfer

Iogen Corporation v. Iogen D2003-0544, Denied

Madrid 2012, S.A. v. Scott Martin-MadridMan Websites D2003-0598 among others, Transfer”.

Therefore, the Panel finds that the requirements of Paragraph 4(a)(i) have been satisfied also with regard to the disputed domain names <t-health.com>, <t-portal.com> and <t-sales.com>.

With respect to Group C, the Complainant does not assert any trademarks that directly correspond with the two subject domain names as in the cases discussed above. Rather, the Complainant asserts its registration for the letter T (Community Trademark registration No. EU1888031), as well as non-registered trademark rights to the T-[descriptive term] construction generally.

Turning first to the issue of the T-[descriptive term], the Panel readily acknowledges the fame of the Complainant’s T-MOBILE mark, and further recognizes the fact that various other services have been built around and offered under additional T-[descriptive term] trademarks. The Complainant has obtained many trademark registrations that would fall under the “T-[descriptive term]” construction. However, the Panel declines to interpret this as giving rise to unregistered trademark rights for all T-[descriptive term] marks. Such a finding with regard to trademark rights would be overly broad. Further, such an issue is one that is more proper for the relevant trademark offices and courts of law – not these administrative proceedings.

With regard to the T registration asserted by the Complainant, there are certainly questions as to how broadly/narrowly such a registration should be protected. The Panel notes that the Complainant does have a Community Trademark registration for T. However, when the simple letter T is compared with the subject domain names, it would be difficult to find that the relevant domain names are confusingly similar to T given the differences in overall appearances of the marks, the pronunciations, meanings, etc.

For the reasons given above, the Panel finds that the Complainant has established the requirements for Paragraph 4(a)(i) of the Policy with respect to the disputed domain names of Group A and B, but not with respect to Group C. Accordingly, the remainder of these discussions will be with respect to the disputed domain names of Group A and B only.

B. Rights or Legitimate Interests

In reply to the Complainant’s assertions and a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain names, the Respondent has offered a number of explanations and arguments. First, the Respondent explains that it had been planning a “t-commerce” business, the “t” referring to television. Having the opinion that such a business could not be successful without the help of the Internet, it obtained various domain names that began with the letter “t” for later use in relation to its intended television commerce business. As evidence of such preparations, the Respondent submitted a receipt for its purchase of a search engine program (USD94.95) in July of 2006. The Respondent also asserts that its use of the disputed domain names with domain name parking services thus far establishes a right and legitimate interests in the disputed domain names.

The Panel is not convinced by the Respondent’s explanations or the evidence submitted. First, the explanation given by the Respondent is not credible, and the only documentary support that has been submitted is a receipt for the purchase of a search engine program dated shortly before these proceedings were commenced. The software could have been purchased for any purposes (personal or other business interests) and not necessarily in connection with genuine preparations to begin a bona fide offering of goods or services via the disputed domain names. In fact, the purchase of a search engine program seems to contradict the Respondent’s initial explanation that the intended business was television commerce (not search engine services).

Further, this Panel disagrees with the Respondent’s assertion that rights or legitimate interests in the disputed domain names have been acquired by using them with a domain name parking service. (Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556). Such a use may be considered proper use of domain names that do not conflict with another’s trademark rights (i.e. not supportive of bad faith), but the use of a domain name with a parking service in itself should not be accepted as demonstrating a right or legitimate interests in the subject domain names. If this were not the case, all cybersquatters who have merely linked domain names to parking services would be able to establish the requirements of Paragraph 4(a)(ii) in their favor.

For the reasons given above, the Panel does not find the assertions and evidence submitted by the Respondent persuasive or sufficiently corroborated. Accordingly, the Panel finds that the requirements of Paragraph 4(a)(ii) of the Policy have been established concerning the domain names of Group A, i.e. <t-biz.com>, <t-box.com>, <t-city.com>, <t-home.com, <t-jobs.com> and <t-network.com>. Considering the Panel’s finding under the third element of the Policy, it is not necessary for the Panel to make a finding under this element with regard to the disputed domain names in Group B.

C. Registered and Used in Bad Faith

On this issue, the Respondent asserts that it was not aware of the Complainant’s trademark rights and therefore could not have had bad faith intentions when it registered the disputed domain names. Further to this, for some of the disputed domain names, the Respondent’s registration of the disputed domain names is prior to the trademark registration dates of the trademarks asserted by the Complainant.

The Panel disagrees with the Respondent’s assertion that bad faith cannot be shown in this case because the Respondent allegedly was unaware of the Complainant’s prior trademark rights when it obtained the disputed domain names. Rarely, if ever, will there be direct proof that a respondent was fully aware of a complainant’s trademark rights and intentionally registered a disputed domain name in bad faith. And so it is not surprising that a respondent may assert ignorance of a complainant’s trademark rights. Accordingly, a panel must always look to the circumstantial evidence in making this determination.

First, referring to Group A, the Panel notes that the Respondent has obtained six domain name registrations that are exactly identical to prior registered trademarks held by the Complainant. Further, it would appear that the Respondent is familiar with Germany. In fact, the Respondent appears to be sufficiently familiar with the German language and has obtained registrations for <zahlungsmoral.com> (the German word for “payment practices”) as well as <anblick.com> (the German word for “view”). Finally, the Panel also notes the Respondent’s apparent ownership of other domain names that would correspond with third party trademark rights. The Respondent holds the domain name registration for <master-card.com> and is using it with domain name parking services. MasterCard is a widely-known trademark for credit card services (“www.mastercard.com”).

As to the domain names of Group B, <t-health.com>, <t-portal.com> and <t-sales.com>, the Panel refers to its discussion under 6.A. The Panel notes that these domain names have all been registered prior to the Complainant’s trademarks T-HEALTH, T-PORTAL and T-SALES, thus the Respondent in all likelihood had no prior knowledge of such marks. Moreover, all of these domain names were registered before the relevant trademark applications were filed. The Panel additionally notes that the Complainant has not established that the terms “t-health”, “t-portal” and “t-sales” were used at the time of the domain name registrations in a manner to create rights at common law.

For the reasons given above, the Panel finds that the requirements of Paragraph 4(a)(iii) of the Policy have been established in relation to the domain names in Group A but no with regard to the domain names in Group B.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the following domain names be transferred to the Complainant: <t-biz.com>, <t-box.com>, <t-city.com>, <t-home.com>, <t-jobs.com> and <t-network.com>.

Also, for all the foregoing reasons, the Complaint is denied with respect to the following domain names: <t-health.com>, <t-portal.com>, <t-sales.com>, <t-broadcast.com> and <t-show.com>.


Ik-Hyun Seo
Presiding Panelist

Boh Young Hwang
Panelist

Sang Jo Jong
Panelist

 

Dated: December 27, 2006

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2006/d2006-0930.html

 

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