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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Deutsche Telekom AG v Ardwell Services Ltd [2008] DRS 5880 (4 October 2008) URL: http://www.bailii.org/uk/cases/DRS/2008/5880.html Cite as: [2008] DRS 5880 |
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Complainant : Deutsche Telekom AG
Germany
Respondent : Ardwell Services Limited
London
mytmobil.co.uk and mytmoblie.co.uk ("the Domain Names")
On the 15th July 2008 the Complaint was lodged with Nominet UK Limited ("Nominet") and hard copy was received on the next day. Nominet validated the Complaint on the 16th July 2008 and on the same day the complaint documents were generated and sent to the Respondent giving it 15 working days within which to lodge a Response and which was to be on or before the 7th August 2008. On the 29th July 2008 Nominet received a non standard electronic response which was sent to the Complainant on the same day giving it 5 working days to reply to the response and which was to be on or before the 5th August 2008. The Complainant did not reply to the response to the Dispute Resolution Service Complaint and on the 6th August 2008 Nominet wrote to the Complainant and the Respondent offering mediation to commence on the 11th August and finish on the 26th August 2008. The mediation was not successful and on the 16th September 2008 the Complainant paid the appropriate fee for a Decision by an Expert pursuant to paragraph 6 of Nominet's DRS Policy ("the Policy").
On the 16th September 2008 Mr. Niall Lawless ("the Expert") was selected and on the same day was formally appointed to act as Expert in this dispute, having confirmed that he knew of no reason why he could not properly accept the appointment and knew of no matters which ought to be drawn to the attention of the parties which might appear to call in to question his impartiality and / or independence. He is required to give his Decision by 7th October 2008.
There are no outstanding formal or procedural issues.
The Complainant is the parent company of T-Mobile (UK) Limited and owns a number of trademarks in the UK. The Complainant is one of the world's largest mobile telephone service providers offering digital voice, messaging and high speed wireless data services to its customers of which almost 17 million live in the UK.
One of the Complainants sub-brands is "MY T-MOBILE". This is a personalized online service which enables the Complainants customers to manage different aspects of their T-MOBILE account.
The Complainant seeks transfer of the Domain Names "mytmobil.co.uk" and "mytmoblie.co.uk" to them.
The Complainant says that the Domain Names "mytmobil.co.uk" and "mytmoblie.co.uk" controlled by the Respondent is an Abusive Registration under Nominet's DRS Policy.
The Complainant says that through its subsidiary T-Mobile (UK) Limited it has acquired substantial goodwill and reputation in the UK and elsewhere. It says that it enjoys a strong reputation in, and high public recognition of its name T-MOBILE in the UK and elsewhere particularly in connection with mobile network services.
It says that the "MY T-MOBILE" sub-brand is an integral part of the T-MOBILE service.
Because of the above, the Complainant asserts that it has RIGHTS according to Nominet's Policy both in T-MOBILE and MY T-MOBILE.
The Complainant says that the Domain Names "mytmobil.co.uk" and "mytmoblie.co.uk" incorporate elements which are typo-variations of its T-MOBILE registered trademark and that the Domain Names differ only in minor ways which are insufficient to remove the clear similarity between them and Complainants trademark.
It says that the Domain Names use the prefix "MY" and although this does move them a little further away from the Complainants registered rights they are still each almost identical to the Complainants unregistered rights in MY T-MOBILE.
Accordingly the Complainant says that the Domain Names are identical with or similar to a mark in which the Complainant has rights.
The Complainant says that there is evidence of circumstances falling within paragraph 3(a)(i)(C) of Nominet's Policy, because the Respondent is using the Domain Names in a way which unfairly disrupts its business. They are doing this because the websites hosted at the Domain Names contain a large number of click-through links to third party websites which appear to be operating in the same market and offering competing services. The Complainant says that this disrupts its business in two ways; firstly because the public are being directed to third party services and also because the public are not finding what they expect they may lose interest or begin to search for a competitor's products or services.
The Complainant says that there is evidence of circumstances amounting to Abusive Registration falling within paragraph 3(a)(ii) of Nominet's Policy, because the use of the Domain Names has been designed to confuse people into believing that they are registered to or associated with it. The Complainant says that whereas a number of click-through links contained on the websites appear to direct users to the Complainant's website, in fact they take the user to the websites of other businesses. Also that although some of the links are related to the sale of T-MOBILE products or services the user is taken to the relevant site via a series of sponsored links and this is evidence that the Respondent is using the Domain Names so as to benefit or attempt to benefit from the Domain Names close association with the Complainant.
The Complainant says that the Respondent is engaged in a pattern of registrations that correspond to well-known names or trademarks in which it has no apparent rights, for example barclayspremiership.co.uk, volkswagn.co.uk, swindontownfootball.co.uk, nickaldeon.co.uk, mercesdesbenz.co.uk, gucchi.co.uk and that their registration of "mytmobil.co.uk" and "mytmoblie.co.uk" is part of a pattern and under paragraph 3(a)(iii) of Nominet's DRS Policy is further evidence of Abusive Registration.
Because of the above, the Complainant asks that the Expert issue an order directing the transfer of the Domain Names to the Complainant.
The Respondent has not responded.
The Nominet DRS Policy requires that for a Complaint to succeed the Complainant must prove to the Expert on the balance of probabilities that :-
i. The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Names; and
ii. The Domain Names, in the hands of the Respondent are Abusive Registration.
Rights include, but are not limited to, rights enforceable under English Law.
In order to show that the Domain Names are Abusive Registrations, the Complainant must prove that the Domain Name either :-
i. At the time when the registration or acquisition took place, took unfair advantage of or were unfairly detrimental to the Complainant's Rights.
ii. Have been used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.
The Complainant is required to prove to the Expert that the Claimant has Rights and that the Domain Names in the hands of the Respondent are Abusive Registrations; both elements must be present.
7.2 Complainant's Rights
It is clear that the Complainant has Rights in the domain name "t-mobile.co.uk", in the trademark T-MOBILE and T-MOBILE is in essence the main part of the company name T-Mobile (UK) Limited. It is also clear that the Complainant uses "MY T-MOBILE" as a sub-brand allowing customers to manage their T-Mobile accounts, for example to "add allowances"; "set up direct debit"; "make a payment"; etc.
The Complainant says that the Domain Names "mytmobil.co.uk" and "mytmoblie.co.uk" are typo variations of its registered trademark and its unregistered rights in MY T-MOBILE and there are only minor differences between these variations which are insufficient to remove the clear similarity.
I accept this and decide that the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Names.
7.3 Abusive Registration
Under the Nominet DRS Policy Section 3 Evidence of Abusive Registration guidance is given as to what factors may evidence that the Domain Names are Abusive Registrations. These are circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily :-
• 3(a)(i)(C) for the purpose of unfairly disrupting the business of the Complainant (subsequently referred to as "Unfairly Disrupting the Complainant's Business").
• 3(a)(ii) Circumstances indicating that the Respondent is using the Domain Names in a way which has confused people or businesses into believing that the Domain Names are registered to, operated or authorised by, or otherwise connected with the Complainant (subsequently referred to as "Using Domain Names to Confuse").
• 3(a)(iii) The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well-known names or trademarks in which the Respondent has no apparent rights, and the Domain Names are part of that pattern (subsequently referred to as "Pattern of Registrations").
Unfairly Disrupting the Complainant's Business. The Complainant says that there is evidence of circumstances falling within paragraph 3(a)(i)(C) of Nominet's Policy, because the Respondent is using the Domain Names in a way which unfairly disrupts its business.
The Respondent has not responded to the above and offered no evidence.
Although on the date of this decision the Domain Names "mytmobil.co.uk" and "mytmoblie.co.uk" are resolving to a Sedo domain name parking webpage (domain name parking allows owners of domain names to earn money by displaying relevant advertisements) there is evidence to demonstrate that they have been used to resolve to websites hosted containing click-through links to third party websites which appear to be operating in the same market and offering competing services, for example www.envirofone.com; www.nomi.mobile.com; www.onestopphoneshop.co.uk; www.mobilefun.co.uk and www.callhappy.co.uk. I accept that this disrupts the Complainants business in two ways because the user is being directed to third party services and also because if they are not finding what they expect they may lose interest or begin to search for a competitor's products or services.
Because of the above, I accept that the Respondent has used the Domain Names to unfairly disrupt the Complainant's business; but the test under Nominet's DRS Policy 3(a)(i)(C) is that the Domain Names were acquired for that purpose.
In respect of this, the Complainant offers no evidence.
Because of this I do not decide on the balance of probabilities that the Domain Names were acquired to unfairly disrupt the Complainant's business and therefore in the hands of the Respondent the Domain Names are Abusive Registrations under the test in Nominet's DRS Policy 3(a)(i)(C).
Using Domain Names to Confuse. The Complainant says that there is evidence that the Domain Names are Abusive Registrations under Nominet's DRS Policy section 3(a)(ii) because they are designed to confuse people that they are registered to or associated with it.
The Respondent has not responded to the above and offered no evidence.
Although on the date of this decision the Domain Names "mytmobil.co.uk" and "mytmoblie.co.uk" are resolving to a Sedo Domain Name Parking webpage there is evidence to demonstrate that they have been used through association with the Complainant to provide links to the websites of other businesses such as www.envirofone.com; www.nomi.mobile.com; www.onestopphoneshop.co.uk; www.mobilefun.co.uk and www.callhappy.co.uk.
As the Domain Names have been used to provide links to other businesses offering products and similar to those offered by the Complainant I do not doubt that the Domain Names are being used in a way which has confused people into believing that the Domain Names are operated by or connected with the Complainant.
I decide on the balance of probabilities that even in the absence of evidence of actual confusion the Domain Names are being used in a way which has confused and will confuse people or businesses and that, under the test in Nominet's DRS Policy 3(a)(ii) in the hands of the Respondent the Domain Names are Abusive Registrations.
Pattern of Registrations. The Complainant says that the Respondent is engaged in a pattern of registering domain names corresponding to well-known names or trademarks in which he has no apparent rights and "mytmobil.co.uk" and "mytmoblie.co.uk" is part of that pattern.
The Respondent has not responded to the above and offered no evidence.
Under Nominet's DRS Policy, if the Complainant can demonstrate that the Respondent is engaged in a pattern of such registrations that would be a factor to consider as evidence of an Abusive Registration.
The Complainant argues that the Respondent is engaged in a pattern of registrations in which it has no apparent rights. The Complainant provides a list of over 200 domain names, including for example barclayspremiership.co.uk, volkswagn.co.uk, swindontownfootball.co.uk, nickaldeon.co.uk, mercesdesbenz.co.uk, gucchi.co.uk and say that their registration of "mytmobil.co.uk" and "mytmoblie.co.uk" is part of a pattern and under paragraph 3(a)(iii) of Nominet's DRS Policy is further evidence of Abusive Registration.
Pattern is a common English language word and in the Combined Chambers Dictionary Thesaurus is cited as meaning a "coherent series of occurrences".
Although many people have a large portfolio of domain names and it is an accepted principle of Nominet that secondary trading in domain names is not in itself abusive, I accept based on the evidence before me that the registrations of domain names such as barclayspremiership.co.uk, volkswagn.co.uk, swindontownfootball.co.uk, nickaldeon.co.uk, mercesdesbenz.co.uk, gucchi.co.uk meet this test.
7.4 Conclusion
The Expert finds on the balance of probabilities that the Complainant has Rights in respect of names identical or similar to the Domain Names and that the Complainant has proved, on the balance of probabilities, that the Domain Names, in the hands of the Respondent are Abusive Registrations.
For the reasons set out in detail above, having decided that the Domain Names in the hands of the Respondent are Abusive Registrations, the Expert directs that the Domain Names are transferred to the Complainant.
Niall Lawless, Nominet Expert
4th October 2008