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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Deutsche Telekom AG v Domain Administration [2007] DRS 4245 (14 January 2007) URL: http://www.bailii.org/uk/cases/DRS/2007/4245.html Cite as: [2007] DRS 4245

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NOMINET UK DISPUTE RESOLUTION SERVICE DRS 4245

Deutsche Telekom AG v Domain Administration

Decision of Independent Expert

1. Parties:

Complainant: Deutsche Telekom AG

Country: DE

Respondent: Domain Administration Limited

Country: NZ

Disputed Domain Names

Myt-mobile.co.uk ("the Domain Name")

2. Procedural Background:

The Complaint was lodged with Nominet in full on 24 November 2006. No Response was filed. On 22 December 2006, the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy ("the Policy").

Cerryg Jones, the undersigned, ("the Expert") confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as an expert in this case and further confirmed that he knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality.

3. Outstanding Formal/Procedural Issues (if any):

There are no other outstanding procedural issues that arise.

4. Background and the Complainant's Contentions:

The Complainant is Deutsche Telekom, the well-known mobile telephone service provider. Digital voice, messaging and high-speed wireless data services are provided under the Complainants "T-Mobile" trade mark to its 17 million customers in the UK and 90 million customers worldwide. The Complainant owns various trade mark registrations in the UK for T-Mobile. One of the Complainant's sub-brands is said to be "My T-Mobile," described as a personalised, online service which enables the Complainant's users to manage various aspects of their T-Mobile account. This service is said to be integral to the T-Mobile service, and features as a primary tab on the front page of the t-mobile.co.uk website. The Complainant says it has rights, as defined under the DRS Policy, in both the names "T- Mobile" and "My T- Mobile", and that the Domain Name is confusingly similar to the former, and identical to the latter, based on an analysis of the non-distinctive elements.

The Complainant has adduced evidence that the website hosted at the Domain Name is operated as a parked website in order to "monetise" traffic via click-through revenues. The Domain Name is hosted with www.domainsponsor.com, alleged to be owned by Oversee.net, which enables owners of "unused" domains to gain revenue from click-through commission whilst the domains are "parked" with them.

The Complainant contends that the Respondent's use of the Domain Name falls under paragraph 3(a) (i) (C) of the Policy, in that it unfairly disrupts its business. The website hosted at the Domain Name contains numerous click-through links to third party websites, some of which appear to be operating in broadly the same field as that of the Complainant and offer competing services, while others eventually link through to the Complainant's own sites. There are also a number of links that operate in the fields of "lifestyle" and "entertainment", and connect to websites that could, according to the Complainant, severely damage its reputation, particularly those which connect to pornographic, dating and gambling websites, given that, in particular, much of its target market includes teenagers and young people.

The Complainant contends that use of the Domain Name is also designed to confuse people into believing that the Domain Name was registered to, or otherwise associated with, the Complainant, on the basis that a number of the click-through links are to competing services or to services within a related business area to that of the Complainant. The Complainant says that this is despite the fact that several of the primary links on the website hosted at the Domain Name are to "T-mobile", "Myt-mobile" and "T-mobile Phone Bill", which, the Complainant alleges, internet users would expect to relate to its products or services. Others are to "My Bill", "Free Ringtone", "Phone Mobile", "Cell Phones" and "Ringtones". Again, these contain a variety of links, many of which are similar to or compete with products and services offered by the Complainant.

To the extent that some of the links are related to the sale of T-Mobile products or services, the Complainant notes that the consumer is taken to the relevant site via a series of sponsored links. The Complainant alleges that, as a result, the Respondent is using the Domain Name so as to benefit, or attempt to benefit, from the Domain Name's close association with the Complainant.

The Complainant asserts that the Respondent is the registrant of domain names that correspond to well known names or trade marks in which the Respondent has no apparent rights, and that the Domain Name is part of that pattern of registration. A list of the co.uk domain names owned by the Respondent is included in the evidence, which indicates there were over 2,700 domains owned by the Respondent as at 6 November 2006. Illustrative examples of domain names owned by the Respondent which incorporate or are very closely related to third party registered trade marks or names include: nattwest.co.uk bbbcnews.co.uk, barclaycreditcard.co.uk, britishairwaysjob.co.uk, and woolsworth.co.uk. WHOIS searches for each of these domains, together with screen captures of the websites for each of them, are exhibited to the Complaint. The Complainant's representatives say that they have conducted a search of the UK and Community trade mark registries, and confirm that the Respondent has no registered rights to these names. The Complainant notes that the Respondent does not confine itself to conducting these alleged activities solely in relation to .co.uk domain names, and has at least one decision against it before WIPO of which the Complainant's representatives are aware, namely Case D20006-0921.

7 Discussion and findings

The Complainant has produced ample evidence of its rights to the trade mark "T- Mobile". This mark is similar to the Domain Name given the incorporation of the "T-Mobile" trade mark, which is by far the most dominant and distinctive aspect of the Domain Name. I do not believe the evidence is sufficient to enable me to conclude that "My T-Mobile" is understood by consumers as a separate and distinct unregistered trade mark.

The Complainant also has to show that the domain name is an abusive registration. Paragraph 1 of the Policy defines this as a domain name which either:

i. was registered or otherwise acquired in a manner, which at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; OR

ii. has been used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainant's Rights."

A non-exhaustive list of factors, which may be evidence of an abusive registration, are set out in paragraph 3a of the Policy. However, these are only examples of conduct, which may be evidence that a domain name is an abusive registration.

I accept the Complainant's submissions that the Domain Name is an abusive registration; in the absence of any submissions or evidence on the part of the Respondent, they raise a clear prima facie case. I have reached this conclusion for the following reasons:

5. the Respondent's use of the Domain Name unfairly disrupts the business of the Complainant by misleadingly diverting traffic searching for information about the Complainant's business under the "T-Mobile" brand;
6. the Respondent's activities are likely to damage the reputation subsisting in the Complainant's trade mark "T-Mobile". This is because the website hosted at the Domain Name contains numerous click-through links to pornographic websites, and, in this respect, I am particularly concerned that much of the Complainant's target market includes teenagers and young people; there is a concomitant risk therefore that the association of its "T- Mobile" brand with these types of websites and services would cause the Complainant to suffer loss to its reputation, and might damage the trust parents and others may place in the Complainant; and
7. the Domain Name is part of a pattern where the Respondent is the registrant of domain names that correspond to well known names or trade marks in which the Respondent has no apparent rights, and that the Domain Name is part of that pattern of registration.

Accordingly, I find that the Domain Name is an abusive registration on the grounds that it has been used in a manner which has taken unfair advantage of or has been unfairly detrimental to the Complainant's rights in the T-Mobile trade mark.

8 Decision:

In the light of the foregoing findings, namely that the Complainant has rights in respect of a name or mark which is similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an abusive registration, I direct that it be transferred.

Cerryg Jones 14 January 2007