WIPO cuts off T-ONLINE mark owner's claim for 'd-online.com'

In Deutsche Telekom AG v foxQ, World Intellectual Property Organization (WIPO) panellist Peter G Nitter has refused to order the transfer of 'd-online.com' to the complainant - the owner of a T-ONLINE mark and 't-online.com' domain name registration.

Deutsche Telekom AG is Europe's largest provider of telecommunications services and has established a presence in most of the major economic centres of the world. It owns a number of international, US and Community trademark registrations for T-ONLINE and T ONLINE on behalf of its T-Online daughter company. It also holds various domain name registrations featuring the terms 't-online' and 'tonline'. It filed a complaint with WIPO following the registration of 'd-online.com' by Korean entity foxQ, arguing that it infringed its rights in the T-ONLINE mark.

Nitter dismissed the complaint and refused to order the transfer of the disputed domain name, despite evidence that foxQ had:

• not actively used the domain name;
  
  
• offered to sell the domain name for $4,750; and
  
  
• not responded to the complaint.

Nitter found that the disputed domain name was not identical to Deutsche Telekom's trademarks nor was it confusingly similar. He stated that Deutsche Telekom had therefore failed to meet the first requirement for transfer in Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy. He noted that the most distinctive part of Deutsche Telekom's trademark was the letter 't' as the term 'online' was (i) descriptive of services connected to the Internet, and (ii) common to many other third-party trademarks for products and services sold on the Web. As such, Nitter held that the T-ONLINE mark was not entitled to a broad level of protection against third-party use of similar trademarks or domain names. He observed that there were several registered domain names in existence that were formed by combining a letter with the term 'online', such as 'a-online' and 'b-online'. Nitter also established that while the letters 't' and 'd' are phonetically similar in both English and German, they are visually dissimilar, and thus there was no extraordinary risk of confusion.

Keith W Medansky and Thomas W Ryan, Piper Rudnick LLP, Chicago