WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Telstra Corporation Limited v. MIC and Syed Hussain
Case No. D2002-0126
1. The Parties
The Complainant is Telstra Corporation Limited a company incorporated in Australia. It is represented by Messrs Mallesons Stephen Jaques, solicitors of Level 28, Rialto, 525 Collins Street, Melbourne, Victoria, Australia 3000 ("Complainant"). The Respondents are MIC and Syed Hussain ("Respondent"). According to the Registrar BulkRs WHOIS database the Respondent's administrative contact is Syed Hussain, MIC, 15 5th Floor, Closter, New Jersey 07624, United States of America.
2. The Domain Name and Registrar
The domain name in suit is . The Registrar is BulkR, Inc. of 10 East Baltimore Street, Suite 1500, Baltimore, Maryland 21202, United States of America. ("Registrar").
3. Procedural History
The history of this complaint is that the Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") on February 8, 2002. The Complaint was filed in accordance with the requirements of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules"). The Panel understands that the requisite payment of US$ 1,500 was properly made.
Verification of the domain name was sought from the Registrar on February 11, 2002. The Registrar confirmed that the domain name was registered with Bulk R, Inc. and that the registrant is the Respondent: MIC and Syed Hussain.
Notice of the Complaint was given to the Respondent on February 25, 2002. However on February 20, 2002, the Complainant's representatives emailed the Center requesting that the Complaint be suspended for a period of two weeks on the basis that the Complainants received notification from the Respondent that he may now be prepared to transfer ownership of the domain name the subject of the Complaint to the Complainant. The Center replied to this request requiring a signed copy of the request for suspension. This was received in hard copy form by a letter from Mallesons Stephen Jaques of February 25, 2002. Confirmation was given by the Center on February 27, 2002, of suspension of the proceedings until March 13, 2002.
On March 12, 2002 the Complainant intimated to the Center that it wished to reinstate the proceedings and confirmed that it had copied its request to reinitiate the proceedings to the Respondents by email, by facsimile and by hard copy. The Center accordingly re-instituted the proceedings by notice dated March 13, 2002. The Notification of the Commencement of the Complaint was given to the Respondent on March 13, 2002, by email and by hard copy sent by courier and by fax. The Panel has seen evidence of this.
No Response having been received from the Respondent notification of the Respondent's default was given by email to the Respondent on April 3, 2002. No Response was received following the Notification of the Respondent's default and a Panel consisting of sole panelist Mr. Clive Duncan Thorne was appointed on April 29, 2002, with a decision scheduled for the May 13, 2002.
The Panel takes the view that the administrative panel has been properly constituted. The Panelist has submitted a statement of acceptance and declaration of impartiality and independence. There has been no further submission by either party. The requisite fee of US$ 1,500 has been paid to the Center. The language of the proceedings is English.
4. Factual Background
The Complainant, which is 50% owned by the Commonwealth Government of Australia and 49.9% by shareholders, installment receipt holders, is the successor in title to the telecommunications businesses operated from 1901 to 1975, by the Commonwealth Postmaster General in Australia and from 1975, under the name "Telecom Australia" and the Overseas Telecommunications Corporation OTC. The Complainant was formed in 1992, by the merger of Telecom Australia and OTC adopted the name Telstra Corporation Limited as it legal name in April 1993. The domestic trading name was changed to Telstra on July 1, 1995, and has been used ever since. In 1997, Telstra was privatised by public offering and subsequently in 1999, another third of the shares in Telstra were floated on the Australian Stock Exchange. It is now one of the largest publicly listed companies in Australia. With a revenue in excess of Australian Dollars 23 billion for the financial year 2000 to 2001. It is also one of Australia's largest employers.
Its main activities, all of which are carried out under or by reference to trade mark "Telstra", include the provision of telephone exchange lines, the provision of telephone call services nationally and internationally, the provision of pay phones in Australia, the operation of mobile telecommunication services, the provision of a large range of data, internet and on-line services in Australia, the provision of directory information and connection services, the publication and distribution of directories and the operation of around 100 retail outlets in Australia using the trade mark "Telstra Shop".
In addition to its operation in Australia Telstra also operates a substantial array of businesses in a number of Asia Pacific and North American and European countries. Countries where Telstra is active include the United Kingdom, New Zealand, United States of America, India and Hong Kong, SAR of China. It also operates wholesale services in China, Germany, Singapore, South Korea and Vietnam and telecommunication consulting services in Cambodia, Indonesia, Japan, Kazakhstan, Kiribati, Laos, Malaysia and Sri Lanka.
Telstra has a considerable business presence in the United States which is the Respondent's current country of residence and is becoming increasingly well known in the United States. It conducts its operations in the United States as "Telstra Incorporated" which is a company incorporated in Delaware with offices in San Francisco and New York. It describes itself as providing telecommunications solutions for United States and multinational companies. Since 1984, more than 200 of the global Fortune 500 companies have become customers of Telstra.
Telstra has registered or has filed applications for 70 trade marks comprising or containing the word Telstra in Australia. Exhibited to the Complaint at Annexure G is a print out from the website of IP Australia (Australia's Trade Mark office) listing the details of those trade marks. The Complainant also has four trade marks with the word "Telstra" registered in the United States. These are detailed Annexure H to the Complaint. It is also registered or has filed applications for registrations pending for the trade mark "Telstra" in many other overseas countries throughout the world. These are set out in Annexure I to the Complaint.
At paragraph 27 to 32 to the Complaint the Complainant sets out details of advertising and sponsorship activities relating to the brand "Telstra". These are significant. An estimate for the financial year 1999 to 2000, shows an advertising spend of Australian Dollars 208.9 million. Telstra also sponsors many sporting, cultural and entertainment events including Australian Olympic teams, Melbourne Cricket Ground, Australian Women's' Hockey Team, the Australian Women's' International Badminton Grand Prix, the Australian Ballet and the Sydney to Hobart Yacht Race.
The Complainant is also the owner of several domain names containing the word Telstra as set out at paragraph 33 of the Complaint including , , and .
The Complainant points out that Telstra has rigorously protected its intellectual property in Australia and overseas. It has on a number of previous occasions successfully used the ICANN Internet Dispute Resolution process to obtain orders for the transfer of inter alia , , and .
The history of the present dispute is that the domain name was registered on March 27, 2001, with the current owner as MIC/Syed Hussain. The Complainant points out that the domain name was registered on the same day the Telstra's Chief Executive office, Dr Ziggy Switzowski announced the formation of Telstra International, a new business group of Telstra to manage its Asia Pacific interests, a copy of the press release is exhibited to the Complaint at Annexure F.
The Complainant became aware of the registration of the domain name in October 2001. An attempt was made to access the domain name as can be seen from Annexure K to the Complaint. Accordingly on November 1, 2001 a representative of Telstra sent a cease and desist letter to the Respondent via its administrative and technical contact Syed Hussain. The letter is set out at Annexure M to the Complaint. On December 3, 2001, Syed Hussain left a phone message with Jenny Baker, Telstra's authorised representative at Mallesons Stephen Jaques, saying that he could be contacted by return call on number 201 750 0625. Jenny Baker attempted unsuccessfully to contact Syed Hussain, leaving him a voicemail message. On December 5, 2001, Syed Hussain contacted Jenny Baker inquiring whether Telstra would be willing to buy or acquire the domain name stating that his interest in the Domain Name was that "if people have a reason to buy a domain name, then other people will try to make money out of it". He indicated that he was prepared to transfer the domain name to the Complainant for US$ 500. Jenny Baker told Mr. Hussain that the Complainant was not in the habit of paying money in excess of the out of pocket costs of registration to people who registered domain names which included its trade mark. A copy of a file note of the conversation on December 5, 2001, is annexed to the Complaint at Annexure N.
The Panel is prepared to accept the evidence of the Complainant. It has carefully considered the supporting annexures to the Complaint. It is also mindful of the fact that there is no contrary evidence filed by the Respondent.
5. Discussion and Findings
In order to succeed in its Complaint the Complainant has to show the following elements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), paragraph 4 (a):-
(i) The domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
(ii) The Respondent has no rights or legitimate interest in respect of the domain name.
(iii) The Respondent's registration and the Respondent's use of the domain name have been and are in bad faith for the purposes of paragraph 4(b) of the Policy.
The Panel proposed to deal with each of these elements in turn.
(i) The domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
The Complainant contends that the relevant part of the domain name "Telstra International" is confusingly similar to the name Telstra which is the subject of the extensive portfolio of trade marks "Telstra" referred to above.
In particular the Complainant asserts that the name Telstra International has no sensible meaning but for its association to the mark Telstra. It also submits that the word "International" though commonly used in other context when used in combination with the unique mark "Telstra" is not one that traders would legitimately choose unless they were trying to create a false association with Telstra and its international operations such as those carried out by Telstra International Limited.
The Panel accepts these submissions and finds for the Complainant in respect of this head.
(ii) The Respondent has no rights or legitimate interest in respect of the domain name.
The Complainant submits as follows:-
(a) The Respondent has not used and has not made any demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. It points out that the domain name does not currently resolve to an active website.
(b) The Respondent cannot claim a legitimate interest in the domain name as the Telstra marks are so distinctive of the Complainant that no one could legitimately choose to use "Telstra International" unless trying to trade off Telstra's rights.
It also points out that the Complainant's investigations indicate that the Respondent has not been known as and has not carried on business as or indeed any other name consisting of Telstra or Telstra International. It refers to two other WIPO Administrative Panel decisions (United States Olympic Committee v. MIC, WIPO Case No. D2000-0189 and Red Hat, Inc. v. Syed Hussain, d/b/a CPIC Net and MIC, WIPO Case No.D2000-1442) in which the Respondent appears to have been involved.
The Panel accepts these submissions and finds that the Respondent does not have a legitimate interest in the domain name in dispute as the Complainant�s use of Telstra pre dates the registration of the domain name and the Respondent does not have any association with the Complainant. There is no evidence that the Complainant has licensed or otherwise permitted the Respondent to use any of its trade marks, nor has it licensed or otherwise permitted the Respondent to apply for or use any domain name incorporating any of those marks.
(iii) The Respondent's registration and the Respondent's use of the domain name has been and is in bad faith.
In support of its submissions as to bad faith the Complainant submits as follows:
(a) The Respondent must have been aware of the Complainant�s reputation in its name and in its trade marks "Telstra" and of the potential to cause customer confusion by registering a domain name that is identical or confusingly similar to the Complainants registered marks.
(b) The Respondent cannot have been anything but specifically motivated to register the domain name because of the Complainants formation of Telstra International announced in a press release dated the same day as the day the domain name was registered.
(c) The registration of is a circumstance indicating that the Respondent has acquired the domain name for the purpose of selling the domain name registration to the Complainant for valuable consideration in excess of out of pocket costs. The Complainant refers to paragraphs 41 and 42 of the Complaint and in particular the telephone conversation between the Complainant's representative and Mr. Hussain, a note of which is set out at Annexure N to the Complaint.
(d) That the Respondent's registration of the domain name is in bad faith by reason of the fact that users of the WHOIS database will be led to believe that the Respondent is Telstra or associated with Telstra.
(e) That the Respondent has used the domain name in bad faith by not establishing an active website.
(f) Relies upon a finding of bad faith in an earlier case; Telstra Corporation Limited v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423 in which it was successful.
The Panel has considered each of these submissions. It is particularly persuaded by the following three facts:-
(i) The coincidence of date between the press release announcing the formation of Telstra International and the registration of the domain name .
(ii) The fact that the Respondent is not actively using the domain name.
(iii) The attempt by Mr. Hussain to sell the domain name to the Complainant for more than out of pocket costs. In this regard the Panel has carefully considered the file note prepared by Jenny Baker exhibited at Annexure N to the Complaint. It is in the Panel's view clear that the Respondent is seeking more than out of pocket expenses for its transfer. The Respondent specifically referred to requiring "a little bit of a price" for transfer of the domain name. He estimated this at "a few hundred dollars" but he invited the Complainant to make a counter offer to the proposal of US$ 500. In these circumstances the Panel finds that the registration and use of the domain name by the Respondent has been and is in bad faith.
Accordingly it follows that the Complainant has succeeded in its Complaint.
6. Decision
In accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules the Panel finds for the Complainant and orders that the domain name be transferred to the Complainant from the Respondent.
Clive Duncan Thorne
Sole Panelist
Dated: May 14, 2002
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