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Nominet UK Dispute Resolution Service

DRS 00456

DEUTSCHE TELEKOM AG =v= ADO1 (True Name Darren Turgel)

Decision of Independent Expert

1. Parties:

   Complainant:	Deutsche Telekom AG
   Address:	Fredrich-Ebert-Allee 140 Bonn
   Postcode:	53113
   Country:	Germany
   Contact Details
   Business Name:	Lovells
   Address:	65 Holborn Viaduct London
   Postcode:	EC1A 2DY
   Country:	GB
   Daytime Tel No:	020 7296 2000
   Reference:	B9/GDBH/DAL
   Respondent:	ADO1
   Address:	5a Alum House Alum Chine Road Bournemouth
   Postcode:	BH4 8DT
   Country:	GB

2. Disputed Domain Names:

   t-mobileringtones.co.uk
   t-mobilelogos.co.uk
   t-mobiletones.co.uk
   t-mobilephones.co.uk

   These domain names are referred to below as the "Domain Names".

3. Procedural Background

   The Complaint was lodged with Nominet on 20 June 2002. Nominet validated the Complaint and notified the Respondent on 20 June 2002 informing the Respondent that it had 15 working days within which to lodge a Response. The Respondent failed to respond. Mediation not being possible in the circumstances, Nominet so informed the Complainant and on 24 July 2002 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 6 of the Nominet Dispute Resolution Service Policy ("the Policy").

   Sallie Spilsbury, the undersigned ("the Expert") has confirmed to Nominet that she knew of no reason why she could not properly accept the invitation to act as Expert in this case and further confirmed that she knew of no matters which ought to be drawn to the attention of the Parties which might appear to call into question her independence and impartiality.

4. Formal/procedural issues

   Under Paragraph 5a of the Dispute Resolution Service Procedure ("the Procedure") the Respondent was required to submit a Response to the Complaint to Nominet by 12 July 2002. The Respondent has failed to do so.

   Paragraph 15b of the Procedure provides as follows:

   If, in the absence of exceptional circumstances, a Party does not comply with any time period laid down in this Policy or Procedure, the Expert will proceed to a Decision on the Complaint.

   Are there exceptional circumstances which would suggest that it is not appropriate to proceed to a Decision?

   It is the view of the Expert that there are no exceptional circumstances. The Respondent has made no attempt to explain its lack of response and there is no evidence to suggest that anything exceptional has occurred.

   The Expert is accordingly authorised under the Procedure to proceed to decide the Complaint. Under paragraph 16a of the Procedure the Expert should reach a decision based on the Parties' submissions (which consists of the Complaint and its Annexes in this case) and the Policy and Procedure. In the absence of any exceptional circumstances the Expert is also entitled to draw such inferences from the Respondent's non-compliance with the Policy or Procedure as she considers appropriate (paragraph 15c of the Procedure).

5. The facts
   
   The Complainant

   The Complainant asserts that it is Europe's largest telecommunications company. The Complaint Form records that over the past year and a half the Complainant has completed or initiated transactions amounting to US$66 billion and that the Complainant has an established presence in the major economic centres of the world, serving customers in more than 65 countries through regional units.

   The Complainant trades under the name "T-Mobile" which is the name under which its business in the mobile communications sector is conducted. The T-Mobile brand was officially launched in the UK in April 2002 (the Complainant having previously traded under the brand "One-2-One".) The Complainant has produced evidence of media reporting of the re-branding which pre-dates the official launch of the T-MOBILE brand -including an online article which appeared in "The Guardian" on 1 September 2001 and an entry from "The Mobile Phone Guide".

   The Complainant asserts (without specific supporting evidence) that the names "Deutsche Telekom" and "T-Mobile" are universally recognised and relied upon as identifying the Complainant.

   The Complainant provides evidence of the following trade mark registrations for the T-MOBILE mark:

   1. The figurative Community trade mark T-MOBILE, covering the European Union (registration no. 000485391). The registration was filed on 26 February 1997 with the date of registration being 20 October 1998. The registration covers telecommunication services and many other goods and services.
      
      
   2. The international trade mark T-MOBILE (registration no. 680034) covering countries including the United Kingdom. The date of protection in the UK is 26 February 1997. The registration covers telecommunication services and many other goods and services. This is not a figurative registration.
      
      
   3. The figurative trade mark T-MOBILE in the UK with registration no. 2246264. The application was published on 9 May 2001 and registration was granted on 24 August 2001. The registration covers telecommunication services and many other goods and services.
      
      

   Domain names registered by the Complainant include: t-mobile.co.uk, t-mobile.com, t-mobile.de and tmobile.de. The Complainant states that it makes use of these domain names.

   The Domain Names

   AD01 registered the Domain Names through its ISP on 13 September 2001. The Complainant draws attention to the fact that this is very close in time to the media reports about the launch of the T-Mobile brand. The Expert notes in particular the report in The Guardian of 1 September 2001. Searches of the WHOIS database on 20 June 2002 lists AD01 as the current Registrant.

   As of June 2002 the websites www.t-mobileringtones.co.uk, www.t-mobilelogos.co.uk, www.t-mobiletones.co.uk and www.t-mobilephones.co.uk were directed to the service provider who registered the Domain Names on behalf of the Respondent.

   There is no evidence before the Expert about approaches made to or by the Complainant in respect of the Domain Names at issue in this Complaint or evidence that the Respondent has made any use of the Domain Names.

   Background information about the Respondent

   In addition to the Domain Names in these proceedings, the Complainant is engaged in a dispute with the Respondent in respect of the domain name t-mobilebusiness.com which, (like the Domain Names which are the subject of this Complaint) is registered in the name of AD01. The t-mobilebusiness.com dispute is proceeding under the Uniform Domain Name Dispute Resolution Policy. Whilst it is not the subject of this Complaint the Complainant has produced documentation relating to the t-mobilebusiness.com dispute which provides relevant background information.

   The Complainant's solicitors, Lovells have spoken to a Mr Darren Turgel about the t-mobilebusiness.com domain name. The Complainant has produced as an annex to its Complaint Form an affidavit sworn on 14 June 2002 by the solicitor with the day-to-day conduct of the t-mobilebusiness.com domain name dispute. The affidavit has been sworn for the purposes of the Uniform Domain Name Dispute Resolution Policy adjudication and records the content of the telephone conversations with the Respondent which took place during the period 5 June 2002- 11 June 2002. Although concerned with a domain name which is not the subject of this Complaint, some of the affidavit is relevant to the matters before the Expert (the Respondent has not objected to the affidavit being used for the purposes of this Complaint).

   Paragraphs 5-7 of the affidavit state as follows:

   5. The Respondent's justification for the choice of the Domain Name, as he explained to me in our 5 June conversation, is that t-mobilebusiness.com stands for "Turgel Mobile Business". The "T" is simply short for "Turgel" and the "mobile" word was chosen because the proposed business involves mobile personnel, people who will visit customers' houses rather than requiring customers to come to them. The Respondent explicitly told me that his proposed business had noting to do with telephones or communication.

   6. Mr Turgel told me that quite a lot of traffic, measured by click-through rate, had been received at the website www. t-mobilebusiness.com. He claimed that he had had a few thousand "hits" and said that he was pretty sure that most of the traffic was intended to be directed at the Complainant's T-Mobile business.

   7. I suggested that it would not be appropriate for the Complainant to pay more than the costs of registration in return for the domain name. The Respondent told me that he would not agree to sell the Domain Name for less than £50,000. His exact words were "I'll need fifty, sixty thousand". I asked him to justify the selling price and he told me it was to recoup his website development costs. These were going to be £40,000 of which he had already paid £25,000. In addition there were his own wages.

   The affidavit records at paragraph 9 that in a later conversation on 10 June Mr Turgel stated that he was willing to reduce the selling price of the Domain Name to £33,000. In paragraph 8 of the Affidavit the deponent asserts that despite requests that he should do so, Mr Turgel has not supplied documentary evidence of the costs incurred to-date in the development of the website.

   Paragraph 10 of the Affidavit states:

   Throughout all the telephone conversations, the Respondent has claimed that:

   1. his business has nothing to do with telephones or communications;
      
      
   2. he was not aware of the rebranding of One-2-One to T-Mobile until the official launch of the new brand at the end of April/beginning of May 2002; and
      
      
   3. he has not registered any other domain names connected with the "T-Mobile brand".
      
      
   Relationship between AD01 and Darren Turgel

   During a telephone conversation on 11 June 2002 the Complainant states that the Respondent confirmed to the Complainant's solicitor that AD01 is Darren Turgel and that he had purchased the t-mobilebusiness.com domain name (registered in the name of AD01) himself. It would therefore appear that AD01 is a trading name for Mr Turgel.

   Mr Turgel's Connection to the telecommunications Industry

   The Complainant has discovered that a company called V4 Corporate Limited trades from the same address as the Respondent. Under the domain name "www.v4.co.uk" the company presents itself as "the cutting edge of Internet and mobile communication technology". "Mr. Darren Turgel" is listed as the contact for V4. On a webpage of the tradeshow ECTA which the Complainant has annexed to its Complaint Form, V4 advertises as follows:

   "Telecoms marketing specialist V4 will be unveiling its new image at ECTA's Barcelona exhibition from 2-4 April 2001 [...] V4's solutions-led approach and in-depth understanding of telecoms has built an impressive range of clients in this sector, including WorldCom, BT, Syntegra and Storm Telecommunications. [...] For further information on how V4 can enhance your company's performance, contact Darren Turgel, Business Development Manager [...]."

   The Complainant relies on this to demonstrate that Mr Turgel would be aware of developments in the telecommunications industry and in particular that it is unlikely that he did not know of the launch of the T-Mobile business until April 2002 when the launch actually took place (despite Mr Turgel's protestations to the contrary).

   The Complainant also points out that Mr Turgel was not being truthful when he stated that he has not registered any other domain names connected with the "T-Mobile brand" given that the Domain Names which are the subject of this Complaint had already been registered by the Respondent at the time of the conversations.

   Other registrations

   In its Complaint Form the Complainant states that In addition to the Domain Names, the Respondent/Mr Turgel has registered the following domain names:

   • T-MOBILEBUSINESS.COM
     
   • T-MOBILERINGTONES.COM
     
   • T-MOBILETONES.COM
     
   • T-MOBILELOGOS.COM
     
   • O2MOBILEPHONES.COM
     
   • O2MOBILEPHONES.CO.UK
     

   Copies of "WHOIS" details relating to the above domain names have been provided by the Complainant as annexes to the Complaint Form. All of the domain names are registered by "AD01". All the .com domains give "Darren Turgel" as administrative contact.

   The Complainant states that "O2" is the new brand name for the UK telecommunications company known previously as BT Cellnet (now O2 (UK) Limited). The Complainant recounts that the imminent adoption of the O2 brand was made public on 3 September 2001. The Respondent did not register o2mobilephones.com or o2mobilephones.co.uk until 20 January 2002, which was after the new brand identity had been publicised but which was apparently before the O2 brand had been launched. This is a similar pattern to the Respondent's conduct in relation to the Domain Names.

6. The Parties' contentions
   
   Complainant

   The Complainant contends that it has rights in the T-MOBILE mark and that this mark is similar to the Domain Names. In support of this claim it explicitly relies on its trade mark registrations for the trade mark T-MOBILE. In addition it implicitly cites the success of the Complainant's business under the T-MOBILE mark as generating goodwill.

   The Complainant asserts that the similarity between the Complainant's T-MOBILE mark and the Domain Names arises because the Respondent has simply added generic suffixes such as "ringtones", "phones" and "logos" to this mark. It states that in each case the distinctive component of each Domain Name is "T-Mobile", and that this will inevitably be seen by the public as the Complainant's brand name and therefore the use of the Domain Names would undoubtedly cause confusion on the part of the public, due to their similarity with the Complainant's mark.

   The Complainant also alleges that the Domain Names in the hands of the Respondent are Abusive Registrations under the terms of the Policy. The Complainant asserts that the registration was abusive for the following reasons:

   (a) The Respondent wishes to sell the Domain Names for profit;

   In support of the above the Complainant relies on the following:

   • The Respondent does not make use of the Domain Names for any legitimate use
     
     
   • The offer to sell the t-mobilebusiness.com domain name to the Complainant on the terms set out above
     
     
   • The circumstances et out above which indicate that the Respondent would have had an awareness of the proposed launch of the T-MOBILE brand at the time that he registered the Domain Names
     
     
   • The alleged deliberate concealment by Mr Turgel of the existence of the Domain Names whilst negotiations were proceeding for the transfer of the t-mobilebusiness.com domain name. The Complainant asserts that if he had revealed the Domain Names at that stage his story about "turgel mobile business" would have lacked credibility. The Complainant asserts that "doubtless, having sold the t-mobilebusiness.com domain for a satisfactory price, the Respondent would have also attempted to sell the Domain Names to the Complainant once their existence was discovered."
     
     
   (b) The Respondent is engaged in a pattern of making Abusive Registrations

   In support of the above the Complainant relies on:

   • The registration of the Domain Names, t-mobilebusiness.com and the domain registrations set out above as demonstrating a pattern of Abusive Registrations.
     
     
   Respondent

   The Respondent has made no formal submissions in relation to this Complaint.

7. Discussion and findings

   Clause 2 of the Policy provides that a Complainant must prove that:

   The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

   (ii ) The Domain Name, in the hands of the Respondent, is an Abusive Registration.

   The onus of proving both of the above elements is borne by the Complainant who must prove them on the balance of probabilities (Clause 2b of the Policy).

   The term "Rights" is defined by the Policy to include, but not be limited to, rights enforceable under English law but the term does not extend to a name or term which is wholly descriptive of the Complainant's business.

   Abusive Registration is defined in Clause 1 of the Policy to mean;

   A Domain Name which either:

   1. 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
      
      
   2. has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.
      
      
   The first criterion under clause 2 of the Policy- the Complainant's Rights
   
   The T-MOBILE mark

   The Complainant has trade mark registrations consisting of the words T-MOBILE in the UK and other territories. The Community Trade Mark (000485391) and the registration at the UK Trade Mark Registry (2246264) are both in the same stylised form which is depicted in magenta and grey. There is no evidence before the Expert of any disclaimers applying to the registration which would prevent protection for the word mark alone. The international registration (which confers protection in the UK) is not a figurative registration- but a registration for the word mark alone. All of the above registrations cover telecommunications equipment and services.

   The Expert is of the view that the international registration for the word mark confers rights on the Complainant in the UK in the word mark T-MOBILE. It is not therefore necessary to consider whether the figurative registrations at the Community Trade Mark Registry or the UK Registry confer rights in the word mark alone under the Policy.

   The Complainant is accordingly able to establish that it owns the requisite rights in the T-MOBILE mark by virtue of its international trade mark registration. The registration conferred protection in the UK from 26 February 1997. The Complainant's rights were therefore in existence at the time that the Respondent registered the Domain Names.

   It is also probable that the Complainant has rights in the goodwill generated by the T-MOBILE mark (it is not necessary for the Expert to form a view on this point in the light of the trade mark registration.) In any event there is insufficient evidence of the way in which the T-MOBILE mark has been used by the Complainant and the extent to which the T-MOBILE mark has been marketed by the Complainant (outside of the telecommunications industry) in the relatively short period since its launch in April 2002 for the Expert to form a definite conclusion about the existence of goodwill.

   Similarity

   The next point for consideration is whether the Domain Names are identical or similar to the T-MOBILE mark in respect of which the Complainant has rights.

   The Domain Names in this Complainant are not identical to the T-MOBILE mark. They each consist of that mark with a further additional element i.e. "ringtones", "logos", "tones" and "phones".

   Notwithstanding the addition of these words the Expert agrees with the Complainant's submissions that the dominant, and most distinctive, element of each of the Domain Names is the prefix "T-MOBILE". The addition of the additional words has not detracted from this focal point, and as such the Expert finds that the Domain Names are similar to the Complainant's T-MOBILE on the basis of visual/aural similarity.

   The Complainant advocates the established test under trade mark law of "confusing similarity" as an appropriate standard for assessing similarity under the Policy. The Expert agrees that this test can serve as a useful guideline. Applying it to the facts the Expert places weight on the fact that Respondent itself has indicated in a telephone conversation with the Complainant's solicitor that its t-mobilebusiness.com domain name seems to have been causing confusion amongst the public (paragraph 6 of the affidavit referred to above). Whilst the t-mobilebusiness.com registration is not the subject of the Complaint there is no reason to suppose that the registration of the Domain Names at issue in this Complaint would have different consequences.

   According the Expert finds that the Domain Names are similar to the Complainant's mark both on the basis of straightforward comparison and also on an application of the test of confusing similarity.

   The second criterion under clause 2 of the Policy- Abusive Registration

   Abusive Registration is defined to include:

   1. Registration or acquisition in a manner which at the time when the registration or acquisition took place took unfair advantage or was wholly detrimental to the Complainant's Rights.

   Clause 3 of the Policy provides a non-exhaustive list of factors which may be evidence that the Domain name is an Abusive Registration. The Complainant relies on two of these grounds as follows:

   Ground one

   There are circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:

   (A) primarily for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name

   Ground two

   > In combination with other circumstances indicating that the Domain Name in dispute is an Abusive Registration, the Complainant can demonstrate that the Respondent is engaged in a pattern of making Abusive Registrations.

   Clause 3(b) provides that failure on the Respondent's part to use the Domain Name for the purposes of e-mail or a website is not in itself evidence that the Domain Name is an Abusive Registration.

   Ground One

   There are a number of circumstances which indicate that the Respondent was primarily motivated by thoughts of financial gain when it registered the Domain Names. These are as follows:

   • The unexplained proximity to the date of the registrations of the Domain Names (13 September 2001) to the announcement of the launch of the T-MOBILE brand (1 September 2001). This proximity is all the more striking given Mr Turgel's apparent connection to the mobile telecommunications industry which would lead one to suppose that at the time when the registration of the Domain Names took place he would have been aware of the forthcoming launch of the T-MOBILE brand in the UK. In the absence of explanation from the Respondent the logical inference is that the Respondent learnt of the impending brand launch and wished to exploit the enhanced value of the Domain Names.
     
     
   • The Respondent's ready offer to transfer the t-mobilebusiness.com registration to the Complainant for an initial sum of half a million pounds -a high figure which the Respondent has been unable to justify.
     
     
   • Whilst the Complainant is unable to point to a definite offer by the Respondent to transfer the Domain Names at issue in this Complaint there is no evidence before the Expert to suggest that the Respondent's conduct in relation to the Domain Names would have been any different to its conduct in relation to t-mobilebusiness.com.
     
     
   • One can only speculate about why the Respondent misled the Complainant about the existence of other T-MOBILE registrations during the sequence of telephone conversations in June concerning the t-mobilebusiness.com domain. Whatever its motivations, the Respondent was not being truthful in those conversations and its behaviour does nothing to remove the impression that it wished to exploit the Domain Names for maximum profit.
     
     

   The above should be balanced against the Respondent's explanation for its use of the t-mobile mark. As stated above the Respondent has asserted in relation to the t-mobilebusiness.com domain that he uses t-mobile to reflect the initial of the Turgel surname and the mobile nature of the Respondent's business. Does this suggest that the registrations of the Domain Names at issue in this Complaint were not acquired primarily for the purpose of sale at an inflated value?

   It is the view of the Expert that in the absence of supporting evidence, the Respondent's explanation for the choice of the t-mobile name is implausible given the above circumstances. It is especially so in relation to the Domain Names at issue in this Complaint which are all quite clearly intended to relate to telecommunications equipment and services rather than the "mobile personnel" to which the Respondent has referred in its contact with the Complainant's solicitors.

   On the balance of probabilities the Expert finds that the Complainant has established circumstances indicating that the registration of the Domain Names was an opportunistic measure made with the objective of securing Domain Names that were about to become very valuable. The primary intention which can be inferred is that the Domain Names would be offered for sale to the Complainant at an appropriate time.

   The Complainant indicates that the Domain Names are not being used for a lawful purpose. It must however be borne in mind that under paragraph 3b of the Policy failure by a Respondent to use a Domain Name is not in itself evidence of Abusive Registration. In any event the Respondent's primary intention can be inferred from the above circumstances without having to rely on the Respondent's non- use of the Domain Name.

   Ground Two

   In the Expert's view the evidence also establishes that the Respondent is engaged in a pattern of Abusive Registrations.

   Not only is there a whole range of other registrations featuring the prefix T-MOBILE but also the respondent appears to be engaged in similar behaviour in relation to O2 (UK) Limited's O2 mark- the registration of the O2 domain names also apparently occurring after the announcement of the launch of the O2 brand in a similar pattern to the T-MOBILE registrations. The Respondent having provided no explanation for its conduct the Expert finds that the Complainant has established on the balance of probabilities that these circumstances are indicative of a pattern of abuse.

   This apparent pattern of Abusive Registrations in conjunction with the above findings concerning primary intent, provides a second ground for finding the Domain Names to be Abusive Registrations.

8. Decision

   The Expert finds that the Complainant has proved on the balance of probabilities that the two elements in paragraph 2 of the Policy are present, namely that the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Names and that the Domain Names in the hands of the Respondent are Abusive Registrations.

   Accordingly the Expert finds in favour of the Complainant and directs that the Domain Names be transferred to the Complainant.