Here’s a twist on the typical cybersquatting fact pattern: What can a company do if someone registers a domain name using the company’s trademark, but instead of setting up a gripe site or otherwise acting mischievously, the cybersquatter promotes the company’s goods and services? Deutsche Telekom recently faced this question when it initiated a WIPO arbitration proceeding against an individual who had registered “tmobil.com”. Nothwithstanding the apparent good intentions of the registrant, Deutsche Telekom won a transfer of the domain name.
The respondent Mighty LLC/Domain Admin developed a site at tmobil.com which had as its only links various “sponsored links” that when clicked on, led to sites of authorized distributors of T-Mobile products. Deutche Telekom, the owner of trademark registrations for “T-MOBILE” and “T-MOBIL” sought a transfer of the domain name under the Uniform Domain Name Dispute Resolution Policy (“UDRP”).
For a domain name be transferred under the UDRP, the complainant must demonstrate that (1) the domain name is identical or confusingly similar to a trademark in which the complainant has rights, (2) the respondent has no rights or legitimate interests in the domain name, and (3) the domain name was registered and is being used in bad faith.
In this case, the parties agreed that the domain name was identical or confusingly similar to Deutsche Telekom’s T-MOBILE mark. The difficult issues for the panel were whether the respondent had any right or legitimate interests, and whether there was the requisite bad faith to warrant a transfer.
No Rights or Legitimate Interests
Under the UDRP, a respondent can demonstrate rights or legitimate interests in the domain name by, among other things, using the domain name in connection with a bona fide offering of goods or services. In this case, the respondent argued that “under the [UDRP] the sale of products associated with a trademark contained in a domain name constitutes the bona fide offering of goods and services, where competitive products are not being promoted and where the Respondent has done nothing to confuse users into believing the site is endorsed by or associated with the Complainant.”
The panel rejected this argument, applying the four-factor test set forth in the decision of Oki Data Americas, Inc v. ASD, Inc. WIPO Case No. D2001-0903. Among the Oki Data factors for bona fide offering are that the respondent (a) actually be offering the goods or services at issue for sale, (b) that the site be used to sell only the trademarked goods, and (c) that the site accurately disclose the site owner’s relationship with the trademark owner. In this situation, the respondent “ran afoul” of all of these factors. No goods were sold from the site, the links led to distributors not only of T-Mobile products and services but of competitors, and a copyright notice at the bottom of the page reading “© Copyright 2005 tmobil.com. All Rights Reserved.” would mislead visitors as to the relationship between the respondent and Deutsche Telekom.
Bad Faith
To find that the respondent had registered and used the domain name in bad faith, the panel invoked a provision of the UDRP which states that bad faith arises where a respondent intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s trademark. In this situation, the respondent did not make it clear it was not associated with Deutsche Telekom, gave a false impression by using the copyright notice as it read, and sought commercial gain through the pay-per-click links featured on the site.
Deutsche Telekom AG v. Mighty LLC/Domain Admin, Case No. D2005-0027