Nominet UK Dispute Resolution Service

 


Nominet UK Dispute Resolution Service

DRS 05856

Deutsche-Telekom AG v Lammtara Multiserve Limited

Decision of Independent Expert

1. Parties

Complainant: Deutsche-Telekom AG

Country: Germany

Respondent: Lammtara Multiserve Limited

Country: United Kingdom

2. Domain Names

t-home.co.uk ("the domain name")

3. Procedural Background

Nominet received hard copy of the complaint dated 2 July 2008 on 3 July. It checked that the complaint complied with its UK Dispute Resolution Service Policy ("the Policy") and the Procedure for the conduct of proceedings under the Dispute Resolution Service ("the Procedure").

The complaint was supported by material in 7 annexes:

C1 details of the Complainant's UK and European trademark registrations

C2 printouts from the website to which the domain name resolved for several months

C3 correspondence between the Complainant and the Respondent (summarised under 'Facts' below)

C4 Dispute Resolution Service guidance on the treatment of material that is, or is labelled, 'without prejudice'

C5 the decision of the appeal panel in Hanna-Barbera Productions Inc v Graeme Hay (DRS 00389)

C6 printouts from the Respondent's website at 2ergo.com

C7 Whois database entries for six of the Respondent's other domain names that are referred to in the complaint

Nominet notified the Respondent of the complaint on 4 July and informed it that it had 15 working days within which to lodge a response. The Respondent requested and was allowed an extension, moving the deadline to 2 August. Soft copy of the response was received on 1 August, with hard copy following on 4 August. The response was supported by material in 7 annexes:

R1 letter dated 8 July from agents for the Respondent to Nominet, requesting an extension to the deadline for a response

R2 confirmation from Nominet that the deadline has been extended to 2 August

R3 a list of 26 of the Respondent's registrations, all with the prefix t- (ignoring the generic suffixes there are 12 domain names across the top level domains .com, .net and .uk)

R4 text of an agreement (undated but, from the surrounding email exchanges, apparently made in February 2002) for the sale of the domain names t-email.net and t-email.co.uk by the Respondent to a buyer acting on behalf of the Complainant

R5 exchanges between buyer and seller about the possibility of the sale of the Respondent's other registrations with a t- prefix

R6 printouts from the Respondent's website at 2ergo.com

R7 results of a Google search on the term t-home

The Complainant was given until 8 August to file a reply to the response, a deadline subsequently - at the Complainant's request - extended by Nominet to 12 August. The reply was received on 12 August. It was supported by material in 3 annexes:

C8 exchanges between buyer and seller about the possibility of the sale of the Respondent's other registrations with a t- prefix (drawn from the Respondent's annex R5)

C9 results of a Google search on the term "t-home" (including quotation marks – unlike the term used to generate the results at the Respondent's annex R7)

C10 Whois database entry showing the Respondent as the registrant of the domain name who-wants-to-be-a-billionaire.co.uk

The dispute was then subject to informal mediation. When that did not resolve the dispute, on 22 September Nominet notified the parties that an expert would be appointed to settle the matter if it received the appropriate fee from the Complainant. The fee was received on 26 September.

On 29 September I, Mark de Brunner, agreed to serve as an expert under Nominet's Dispute Resolution Policy and Procedure. I subsequently confirmed that I am independent of each of the parties and that there are no facts or circumstances that might call into question my independence.

4. Outstanding Formal/Procedural Issues

Relevant version of DRS Policy and Procedure

For complaints filed on or after 29 July 2008 there is a new version (version 3) of the Dispute Resolution Service (DRS) Policy and Procedure. Version 2 of the rules applies to complaints filed between 25 October 2004 and 28 July 2008. This complaint was filed on 3 July 2008 so version 2 of the Policy and Procedure applies.

Correspondence marked 'without prejudice'

The parties cannot agree whether certain of the correspondence, sent by the agents for the Respondent and labelled 'without prejudice save as to costs', should be admitted in evidence in proceedings to settle the dispute. The Complainant says it should be admitted. The Respondent says it should not.

The Complainant argues that the evidence is admissible because, despite the label, it is not truly 'without prejudice' to these proceedings. It says the correspondence relates to a 'commercial arrangement' rather than 'a genuine attempt to settle' - or alternatively that, even on the Respondent's case, the correspondence is without prejudice to possible court action rather than to settlement through the DRS. If these points do not hold and the evidence is truly 'without prejudice' for present purposes, the Complainant points to the long-established approach that the general rule on excluding such evidence in litigation proceedings does not apply to Nominet's DRS. So either the evidence here is not truly without prejudice or it is but can be admitted anyway.

The Respondent argues that the approach within the DRS, allowing 'without prejudice' evidence, applies only to material relating to a DRS complaint and that the correspondence does not fall into that category: it is without prejudice to a defence against threatened proceedings in the High Court either under trade mark law or in an action against passing off. So the evidence is truly without prejudice but not for DRS purposes: the normal DRS approach, admitting such evidence, does not apply and the correspondence should be disregarded.

As the Complainant notes, the approach to be taken to the 'without prejudice' rule was established in the very first appeal heard under the DRS rules introduced in 2001 – Hanna-Barbera Productions Inc v Graeme Hay. The appeal panel concluded that there were sound reasons for not adopting the rule in relation to DRS cases – except for material generated within the informal mediation stage. That conclusion has since been formalised within the Policy. Paragraph 6 says:

Documents and information which are 'without prejudice' (or are marked as being 'without prejudice') may be used in submissions and may be considered by the expert except that the expert will not consider such materials if

(i) they are generated within informal mediation; or

(ii) the expert believes that it is in the interests of justice that the document or information be excluded from consideration

The correspondence here was not generated within informal mediation. Is it in the interests of justice to exclude it from consideration? The DRS guidance (C4) suggests that one of the reasons for ordinarily admitting 'without prejudice' material is that very often the main evidence of an abusive registration is an exorbitant demand for money and that it would not be sensible on policy grounds to make it easier to disguise such a demand. The correspondence here relates to amounts sought for the sale of the domain name. As such it forms an important part of the context to the dispute and I do not believe it is in the interests of justice that it should be excluded.

The evidence is admissible.

5. The Facts

At the time of writing, the domain name did not resolve to anything but I have visited the Respondent's website at 2ergo.com and the Complainant's websites at t-mobile.co.uk, t-mobile.com and t-home.com. From those attempted and successful visits, the complaint and the administrative information supplied routinely by Nominet, I accept the following as facts.

The Complainant is a leading global telecommunications company. As at May 2008 it was operating in 50 countries with some 123 million customers. T-Mobile International Ag & Co. KG, known as 'T-Mobile', is a wholly owned subsidiary of the Complainant.

The Complainant holds UK and European trademark registrations for T-Home as a name and in a distinctive form as a logo. The earliest of those before me has a filing date of 9 May 2005 and a priority date of 19 January. The latest has a filing date of 16 October 2007 and a priority date of 20 April 2007. The Complainant uses 'T-Home' to refer to an internet portal that allows customers to access service information (including details of its broadband television service) and to update their accounts.

The Respondent is a supplier of mobile communications products and services to businesses and to the marketing and entertainment industries (rather than directly to the public). Its website refers to the provision of messaging and payment services, content management and mobile internet. The registrant's name on the Nominet database is Lammtara Multiserve Limited but in fact the company changed its name to 2ergo Limited on 31 October 2003.

The domain name was registered on 2 September 1999. For most of the time since then it has not been used. Between January and mid May 2008, however, it was connected to a website styled 'moneybags.net' that contained financial news and links to providers of various kinds of financial service. The financial information was drawn from feeds that included moneysupermarket.com, property.scotsman.com and financeweek.co.uk. In mid May the site was taken down and the domain name is not presently in use.

The Respondent's other domain name registrations include or have included

Domain name (all .co.uk)	Registration date
who-wants-to-be-a-millionaire	17/11/1999
techmarkindex	23/09/1999
winona	11/10/1999
premium-bond	10/12/1999
m-c-f-c	18/01/2000
gd95	06/02/2001

as well as the following domain names with the prefix 't':

Domain name (excluding generic suffix)	Registration date	Registration date	Registration date
Registration date	.com	.net	.co.uk
t-email		no details	no details
t-ems	25/04/2002	25/04/2002
t-home			02/09/1999
t-invent	11/10/2000	11/10/2000	11/10/2000
t-inventing	11/10/2000	11/10/2000	11/10/2000
t-message	11/10/2000	11/10/2000	11/10/2000
t-mms		25/04/2002	25/04/2002
t-news		31/01/2002	31/01/2002
t-sms		11/10/2000	11/10/2000
t-text	31/01/2002	31/01/2002	31/01/2002
t-trolley	09/11/2000	09/11/2000	09/11/2000
t-work			02/09/1999
t-x			21/09/1999

In March 2002 the Complainant approached the Respondent and expressed an interest in 't-email'. It was subsequently agreed that, for 100,000 euros, the Respondent would assign and transfer to the Complainant

t-email.net

- t-email.co.uk

- all other 't-email' domain names currently registered under any generic or country code top or second level domain in the name of the seller, or on behalf of the seller in the name of a third party

- all other 'temail' domain names currently registered under any generic or country code top or second level domain in the name of the seller, or on behalf of the seller in the name of a third party

In addition, the Respondent undertook to

cease and desist from using or registering marks/designations/names/domains with the components 't-email' or 'temail' or any confusingly similar marks/designations/names/domains containing the words 't-email' and/or 'temail' and/or 't-mail' and/or 'tmail'.

In July 2002 the Respondent renewed contact with the Complainant, noting that since the agreement around 't-email' the Complainant had launched its 't-mobile' brand, pointing to a common interest in 't' and asking whether the Complainant would be interested in buying any of the Respondent's remaining domains with a t- prefix (listed in the table above) - including the domain name presently at issue. The Complainant's representative replied in October that it would consider buying one or more of the domain names but warned against setting a price merely by extrapolating the amount paid in respect of 't-email': in his words to the Respondent, that was 'because "t-email" is an important brand of our client while the names you have suggested are not'.

The Respondent replied later that month to the effect that it was looking to sell the t- domains as a block rather than individually and asking the Complainant to make an offer. There appears to have been no further communication between the parties about this for nearly 6 years. Then

in February 2008, agents for the Complainant wrote to the Respondent explaining the Complainant's interest in the name T-Home, alleging trade mark infringement and passing off and seeking the transfer of the domain name

- agents for the Respondent offered an initial reply that noted that their client's registration of the domain name appeared to pre-date the Complainant's trade mark applications and registrations

- on 7 March, agents for the Respondent referred to the earlier agreement over 't-email' for 100,000 euros and offered the remaining t- prefix registrations for 200,000 euros per domain name, based largely on the perceived value to the Complainant but also reflecting what the agents referred to as the Respondent's re-branding costs. The agents for the Complainant replied that the Respondent would not incur any re-branding costs because it did not possess a trading style based on t-: the domain name simply resolved to a website styled moneybags.net

- on 16 April, the agents for the Respondent dropped the asking price to 100,000 euros per domain name. There is no evidence of further contact between the parties until the DRS complaint made in July

6. The Parties' Contentions

(Sub-numbers here correspond to the sub-numbering in section 7.)

Complainant

The Complainant says it has registered rights in T-Home through its UK and European trademarks. It also asserts that, through its T-Mobile subsidiaries, it has acquired substantial reputation and goodwill – by implication, in T-Home, though it does not say so explicitly.

It refers to the Policy's non-exhaustive list of factors that might be evidence that the domain name is an abusive registration, arguing that the Respondent

(1) registered the domain name primarily to sell it to the Complainant at more than cost (DRS Policy: paragraph 3 a i A)

(2) registered the domain name primarily for the purpose of unfairly disrupting the Complainant's business (3 a i C)

(3) is using the domain name in a way which has confused people or businesses into believing that the domain name is connected with the Complainant (3 a ii). The Complainant says that its T-Mobile brand is well known and that its T-Home 'sub-brand' means that internet visitors to the website at the domain name will have been misled, if only initially

(4) is engaged in a pattern of registrations where the Respondent is the registrant of the domain names which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the domain name is part of that pattern (3 a iii). The Complainant says the pattern is evident in the registration of:

who-wants-to-be-a-millionaire

techmarkindex – it says the techmark index is the FTSE technology sector index and that 'techmark' is a registered trade mark

winona – it suggests this is likely to refer to the actress Winona Ryder

premium-bond

m-c-f-c – it says this is a typical example of the Respondent's 'football club' domains

gd95 – it says this refers to a Panasonic mobile phone

Respondent

The Respondent argues that the domain name is not an abusive registration because:

(5) it coined the domain name so as to create a 'fun and memorable' email address when used with the symbol '@'

(6) its use of 't-home' significantly pre-dates the Complainant's interest in 't'

(7) googling T-Home does not bring up any references to the Complainant on the first page of results. There were only 241 visits to the website at the domain name in total, suggesting little room for confusion

(8) there are legitimate reasons for the registration of the other domain names mentioned in the complaint. In particular:

who-wants-to-be-a-millionaire.co.uk is a reference not to a popular television game show but to the Cole Porter song from the 1956 film High Society. The Respondent has other registrations that are song titles

winona.co.uk was registered in honour of the daughter of one of the Respondent's directors

gd95.co.uk was registered on behalf of a client that at the time was Panasonic's authorised UK distributor

In addition, the Respondent claims

(9) the Complainant is acting in bad faith in that

there is no reference in the body of the complaint to the earlier agreement between the parties relating to t-email – though the agents acting for the Complainant now also acted for the Complainant as purchaser under the terms of that earlier agreement

the Complainant has sought to include 'without prejudice' correspondence

it gave no advance notice of its intention to start proceedings under the DRS

Complainant's reply

In its reply to the response, the Complainant makes the following points.

(10) There is no evidence that the Respondent's use of the prefix t- significantly predates the Complainant's. Indeed the Respondent has no goodwill in 'T-Home' because in the main it has not used the name. To the extent that the domain name was used, that use took unfair advantage of the Complainant's rights: the Complainant's trademark registrations cover activities relating to finance, real estate and insurance and the moneybags.net site contained information and links relating to all of these.

(11) Googling "T-Home" (including the inverted commas) returns a reference to the Complainant as the very first hit (t-home.de). Whether there has been actual confusion or not is not relevant.

(12) Registering song titles may take unfair advantage of the owners of the rights to those songs. In any event, the explanation for who-wants-to-be-a-millionaire.co.uk is not plausible given that the Respondent has also registered who-wants-to-be-a-billionaire.co.uk.

In relation to the charge of bad faith

(13) the Complainant doubts the relevance to the present dispute of the earlier agreement in relation to 't-email'

7. Discussion and Findings

General

To succeed in this complaint the Complainant must prove, on the balance of probabilities, that

- it has rights in respect of a name or mark which is identical or similar to the domain name; and

- the domain name, in the hands of the Respondent, is an abusive registration.

Complainant's Rights

The status of its unregistered rights is less than clear, but the Complainant evidently has registered rights in T-Home through its UK and European trademarks. Ignoring the .co.uk suffixes (as simply generic features of the domain name registry) and letter case (domain names conventionally being rendered in lower case), the domain name is the same.

I conclude that the Complainant has rights in respect of a name which is identical to the domain name.

Abusive Registration

The DRS rules define an abusive registration as a domain name which either

- 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

- has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's rights.

The Policy contains a non-exhaustive list of factors that may point towards an abusive registration and the Complainant argues that many of them apply here. The Policy also contains a similarly non-exhaustive list of factors that may be evidence that a domain name is not an abusive registration. The Respondent does not refer to any of them explicitly but those that are arguably most relevant are where

before being aware of the Complainant's cause for complaint, the Respondent has used or made demonstrable preparations to use the domain name in connection with a genuine offering of goods or services or made legitimate non-commercial or fair use of the domain name (Policy: paragraph 4 a i A and C)

- the domain name is generic or descriptive and the Respondent is making fair use of it (4 a ii)

The analysis that follows reflects both lists of factors to the extent that they appear relevant.

Registration for the purposes of selling to the Complainant at a profit (1 and 5)

The Respondent says its intention in registering the domain name was that the 't' should be read alongside the symbol '@' so that t-home.co.uk would become @t-home.co.uk. I cannot see that the conceit works, strictly, because '@' stands for 'at', so using 't' alongside '@' simply adds a superfluous 't' ('att-home'). But it perhaps has a superficial, if false, logic that might make it attractive for marketing purposes. In any event, I have seen no evidence that the Respondent registered the domain name with the Complainant or a competitor of the Complainant in mind.

Unfair disruption (2, 6 and 10)

Given the timing, it seems highly unlikely that the Respondent registered the domain name primarily unfairly to disrupt the Complainant's business: on the evidence before me, at the time of registration the Complainant did not have the interest in 't' or 't-home' that it subsequently acquired.

Confusion (3, 7 and 11)

The Policy refers to circumstances indicating that the Respondent is using the domain name in a way which has confused people or businesses into believing that the domain name is connected with the Complainant. I accept that likelihood of confusion is potentially just as relevant a factor. It is evidently possible that internet users looking for the Complainant's website would, for several months during 2008, land at the Respondent's web page and only realise once there that they were not where they intended to be (so-called 'initial interest' confusion). I also note that while a Google search on T-Home without quotation marks does not generate any hits relating to the Complainant, the same search term in quotation marks returns the Complainant's website as the first entry. The initial questions for me are: how likely is any confusion and how significant a factor is it? On the evidence, this kind of confusion is not very likely – only a very small number of users ever hit the Respondent's web page through this route and it is not obvious that Googlers routinely put their search terms in inverted commas. The potential for confusion arises squarely because of the parties' common interest in t-home – and arguably that means the Complainant's choice of 'sub-brand' as much as it means the Respondent's registration and use of the domain name. That must affect its weight as a factor.

Pattern (4, 8 and 12)

The Complainant appears to be on stronger ground in claiming that the Respondent is engaged in a pattern of registrations corresponding to well known names in which it has no apparent rights. The Complainant concedes that, for many of the domain names, third party rights do not appear to be an issue. Where such rights do appear to be an issue, however, some of the Respondent's explanations for its choice of domain name look either implausible or of little assistance to it. In particular: who-wants-to-be-a-millionaire.co.uk sounds less like a song reference when taken with who-wants-to-be-a-billionaire.co.uk (and, at first sight, other song references could well collide with rights that the Respondent does not possess).

The other limb to that factor in the Policy's list, though, involves the Complainant's showing that the domain name is part of that pattern. But whether the subject of the present dispute is a name in which the Respondent has no apparent rights is really part of the bigger question it falls to me to decide. In any event, the domain name appears to have been registered before the Complainant had any interest in 't' and that alone makes it less obviously part of a relevant pattern.

Bad faith (9 and 13)

I can now deal with the key factors offered by the Respondent as evidence that the Complainant has been acting in bad faith:

there is no reference in the body of the complaint to the agreement between the parties relating to t-email: I note that shortly after that earlier agreement the Complainant's representative had said that T-Home was not important to it. The Complainant says that that earlier agreement was not relevant. I must say I find that conclusion surprising: the agreement and exchanges shortly afterwards seem plainly to have a bearing on the present dispute

the Complainant sought to introduce in evidence the correspondence marked 'without prejudice': in my view it must be open to either party to put evidence forward so that the expert can decide on its admissibility

the Complainant gave no advance notice of its intention to start proceedings under the DRS: there is no requirement on the Complainant to notify its intention in advance of making a complaint to Nominet and I draw no inference from the absence of such notice

I am surprised both that the Complainant believed that the earlier agreement around t-email was not relevant to the present dispute and that the Respondent should seek to exclude from consideration the correspondence around the more recent offer for sale. But in part that is the nature of disputes and I find no evidence of bad faith on either side.

Use in connection with genuine offering/fair use

The Respondent says that its use of the domain name significantly pre-dates the Complainant's interest in the name. But as far as I can see, while the Respondent made the registration before the Complainant's interest, it did not make any use of the name until 2008. So while the Respondent's interest in the name t-home may pre-date the Complainant's, its use of that name appears not to.

Summary and conclusion

I think on a true analysis of the facts here, the Respondent registered a number of names with a t- prefix without any clear idea of the use to which they would be put. The Complainant decided that t-email and related domain names suited its commercial purposes and reached an agreement over them. Subsequently, the t- prefix became central to the Complainant's branding. But that evidently took a little time: in October 2002 the agents for the Complainant were saying that while t-email was an 'important brand' of the Complainant, the Respondent's remaining t- prefixed domain names were not. I am satisfied that the registration of the t- prefix names was without reference to the Complainant's rights, because at the time of registration even on the Complainant's case there were no such rights.

If the registration of the domain name did not take unfair advantage of the Complainant's rights, I can turn now to its use. The domain name was used between January and mid May 2008 in an attempt to connect internet traffic to the Respondent's moneybags.net web pages. The attempt does not appear to have been very successful: there were hardly any visitors. But was it made on the back of the Complainant's rights? It is true that the Complainant's trademark registrations include the use of 'T-Home' for financial and real estate affairs and for insurance. On the Complainant's case, that is enough for the Respondent to be taking unfair advantage of the Complainant's rights – even though the Complainant concedes that it was not actively exercising its rights in those fields.

I cannot agree that that is sufficient. Even the Complainant appears to concede that its rights are not necessarily exclusive. (In its reply to the response to the complaint, seeking to confirm its rights, it notes that 'the rights the Complainant has do not have to be exclusive…To be successful under the Policy, all the Complainant needs to show is that they (sic) have rights which exist, and that these are being abused by virtue of the disputed domain name'.) Unless use of the prefix t- in the widely drawn list of fields in a trademark application can only ever refer to the Complainant, it does not seem to me necessarily abusive for the Respondent to have used the domain name to link to a financial portal. These questions are frequently finely balanced but, on the facts before me, in my judgement the use of the domain name did not take unfair advantage of the Complainant's rights.

What, then, of the attempted sale of the domain name (and other domain names with a t- prefix)? My starting point is that the Respondent had, at registration, a domain name which referred to no one thing in particular: it was, in that sense, truly generic. (That is not conclusive of the character of the registration because even generic domain names must be used fairly. But I have dealt with use above.) The Complainant's growing interest in the t- prefix meant that the domain name's marketability increased. The Complainant makes much in its submissions of the Respondent's have priced the domain name by reference to its value to the Complainant, but it is difficult to conceive on what other basis the Respondent could have proceeded. The question is whether the value depended on unfair advantage being taken of the Complainant's rights.

In the DRS decision to which the Complainant itself refers (C5: DRS 00389), the appeal panel said:

The fact that a demand for money may be in excess of the out of pocket expenses of the registrant cannot of itself constitute abusive use of the domain name. Were it to do so, domain name dealing, of itself a perfectly legitimate activity, would be outlawed at a stroke – not something that the architects of the Nominet DRS could conceivably have contemplated. All depends upon the domain name in issue. Ordinarily, the price put upon a domain name by a registrant is simply evidence of what the registrant regards as being its market value. Many generic names command high prices.

Domain name registrations are offered first come, first served. The Respondent got there first – apparently before the Complainant even had an interest in 't'. It found itself the owner of some generic names that subsequently came to be of particular value to the Complainant. It sought to exploit that position but not, in my judgement, by taking unfair advantage of the Complainant's rights. The Respondent was simply making the most of its situation and it was entitled to do that – as the Complainant itself appears originally to have conceded when it paid a substantial sum for other t- prefixed domain names several years earlier.

My conclusion is that the domain name was not registered and has not been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's rights.

8. Decision

I find that the Complainant has rights in respect of a name which is identical to the domain name but that the domain name, in the hands of the Respondent, is not an abusive registration.

In the light of that, I direct that the domain name be left undisturbed.

Mark de Brunner

17 October 2008