WIPO Domain Name Decision D2002-0127 for telstrainternational.com

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Telstra Corporation Limited v. Zanzibar IT Computer Services

Case No. D2002 - 0127

 

1. The Parties

The Complainant is Telstra Corporation Limited, 38/242 Exhibition Street, Melbourne, Victoria, Australia 3000.

The Respondent is Zanzibar IT Computer Services, 10275 Centurion Crt, Jacksonville, FL 32256 United States.

 

2. The Domain Name and Registrar

The domain name at issue is .

The registrar for the disputed domain name is Tucows, Inc, 96 Mowat Avenue, Toronto, Ontario, M6K 3M1, Canada ( the "Registrar").

 

3. Procedural History

The essential procedural history of the administrative proceeding is as follows:

(a)The Complainant initiated the proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy (the "Policy"), approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, by the filing of a Complaint via e-mail and by courier mail, received by the WIPO Arbitration and Mediation Center ("WIPO") on February 8 and 12, 2002.

(b)On February 11, 2002 WIPO transmitted a Request for Registrar Verification to the registrar, and received the Registrar�s Response on the same day. The Registrar confirmed that it is the registrar of the domain name ; confirmed that the current registrant of that domain name is the Respondent, Zanzibar IT Computer Services; informed that the administrative, technical, zone and billing contact for the Respondent is Tim Adler; and provided a postal and an e-mail address, and a telephone and a facsimile number, for the contact. The Registrar also confirmed in its response that the terms of the Registration agreement between it and the Respondent provides that the Respondent agrees to be bound by the domain name dispute policy incorporated therein. The policy incorporated into the agreement is the Policy.

(c)On February 14, 2002 WIPO submitted its Request for the Complaint Transmittal Coversheet. WIPO received the Complaint Transmittal Coversheet by email on February 15, 2002 and the hardcopy of it on February 25, 2002.

(d) In accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and Paragraph 5 of the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules") WIPO verified on February 27, 2002, that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that the payment in the required amount to WIPO has been made by the Complainant. On the same day WIPO transmitted Notification of Complaint and Commencement of the Administrative Proceeding to the Respondent via e-mail and courier mail. Copies of this Notification of Complaint were sent to the Complainant, the Registrar and ICANN on the same date.

(e) Having received no response from the Respondent within the specified time in the Notification of Complaint, on March 20, 2002, WIPO issued to both parties a Notification of Respondent�s Default.

(f)On April 8, 2002 WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence (the "Statement and Declaration"). On April 9, 2002 the undersigned transmitted by fax the executed Statement and Declaration to WIPO.

(g)On April 10, 2002 the Complainant and the Respondent were notified by WIPO of the appointment of the undersigned as sole panelist on the Administrative Panel (the "Panel") in this matter. On the same date WIPO notified that the Projected Decision Date would be April 24, 2002. The sole panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.

The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.

The Administrative Panel shall issue its Decision based on the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of any Response from the Respondent.

 

4. Factual Background

Complaint asserted, and provided evidence in support of, and the Administrative Panel finds established, the following facts.

Complainant�s Activities

The Complainant is one of the largest publicly listed companies in Australia. Its 49.9 % publicly issued stock has a market capitalization of about $A35 billion. The Complainant is the leading telecommunications and information services company, offering a wide range of telecommunications and information services. Its revenue in the financial year 2000�2001 exceeded $A23 billion of which $A18.7 billion was sales revenue. The Complainant is one of Australia's largest employers. Its full-time employers as at June 30, 2001 numbered 44,874. The Complaint�s main activities, all of which are carried out under or by reference to the TELSTRA mark, are the provision of exchange lines to residences and businesses across Australia; the provision of local, long distance domestic and international telephone call services to over 8 million residential and business customers in Australia; the provision and maintenance of approximately 36,000 public payphones in Australia, in addition, 42,000 coin operated payphones are leased or sold to the Complainant's customers; the operation of mobile telecommunications services to 5.2 million customers; the provision of a range of data, Internet and on-line services (including the largest Internet Service Provider in Australia); the provision of wholesale services to other telecommunications carriers and carriage service providers; the provision of directory information and connection services to over 520 million calls per annum; the publication and distribution of white pages and yellow pages directories in hard-copy, CD-ROM and on-line formats; and the operation of around 100 TelstraÒretail outlets throughout Australia using the trade mark "TELSTRA SHOP".

In addition to its operations in Australia, the Complainant also operates a substantial array of businesses in a number of Asia-Pacific, North American and European countries, either alone or in partnership. Many of these operations are conducted via the Complainant�s subsidiary companies, including Telstra International Limited and Telstra International (HK) Holdings Limited. Many of Telstra�s overseas operations involve extensive wholesale activities and a number are retail. Countries where Telstra is active include UK, New Zealand, USA, India, and Hong Kong. The Complainant provides mainly wholesale services in China, Germany, Singapore, South Korea and Vietnam; and telecommunications consulting, contracting, facilities management and outsourcing services in Cambodia, Indonesia, Japan, Kazakhstan, Kiribati, Laos, Malaysia and Sri Lanka.

In 1999, The Wall Street Journal ranked Telstra in the top 50 of "The World�s 100 largest Public Companies" and Telstra ranked 62nd in Business Week�s 1999 Global 1000 of the world�s most valuable companies by market value. Telstra also has a considerable business presence in the United States (being the Respondent�s current country of residence). The Complainant conducts its operations in the United States as "Telstra Incorporated", a company incorporated in Delaware with main offices in San Francisco and New York. Telstra Incorporated provides telecommunications solutions for United States and multinational companies. Since 1984, more than 200 of the global Fortune 500 companies have become customers of Telstra Incorporated. The specific services offered by Telstra Incorporated to companies in the United States are as follows: voice products such as private networks, toll-free services, teleconferencing and calling cards; advanced data solutions to its customers, including international lease lines, global frame relay, ATM and IP products and services; access for customers to the World Wide Web, as well as secure dial-up capabilities to its host service providers; a portfolio of services to enable its customers to conduct secure transactions over the internet in the business-to-business electronic marketplace; assistance of its customers to operate in the Asia Pacific region by offering solutions including data hubs and customer contact centers; a range of managed services including telehousing and consultancy services; and customer service divisions in the United States and in Australia to handle both provisioning of services and any fault management or inquiries relating to a Telstra service.

"TELSTRA" is one of the best known brands in Australia and has substantial operations in many overseas countries where it is working toward achieving world wide recognition through sponsorship and advertising. The products and services referred to above are all offered under or by reference to the trade mark "TELSTRA" (alone, or in combination with other trade marks such as "TELSTRA SHOP"Ò, MobileNetÒ, White PagesÒand BigPondÒ). A market research study shows extremely high levels of consumer recognition of the "TELSTRA" brand (Annexure M to the Complaint).

The "TELSTRA" trade marks are heavily promoted through advertising and sponsorship in Australia and overseas (for example, through Telstra�s sponsorship of the 2000 Olympic and Paralympic games). The Complainant regularly advertises its services and products in all media and its promotional and advertising budget in the financial year 1999�2000 was about $A208.9 million. The Complainant is a major sponsor of many sporting, cultural and entertainment events and programs. Many of the events and programs in which Telstra has been involved as a sponsor have been televised internationally, leading to increased exposure of the "TELSTRA" trade marks in overseas countries.

Complainant�s Trading Name and Trademarks

The Complainant is the successor in title to the telecommunications businesses operated from 1901 to 1975 by the Commonwealth Postmaster-General and from 1975, under the name "Telecom Australia" and the Overseas Telecommunications Corporation, OTC. Telstra was formed in 1992, by the merger of Telecom Australia and OTC and adopted Telstra Corporation Limited as its legal name in April 1993, still trading domestically as Telecom Australia, however trading offshore as Telstra. On July 1, 1995, the domestic trading name Telecom Australia was changed to "TELSTRA" and has been used ever since.

The Complainant has registered, or has filed applications with registrations pending for, 70 trademarks consisting of or containing the word "TELSTRA" in Australia (details of which are contained in Annexure J to the Complaint), including a number of registrations in class 38 in respect of telecommunications services. The various trademark registrations and applications cover an extensive range of goods and services, and span 17 of the 42 trademark classes. The Complainant also has four trademarks for the word "TELSTRA" registered in the US in classes 9 and 38 of the register for a range of telecommunications equipment and parts and telecommunications services respectively (details of which are contained in Annexure K to the Complaint). As well, the Complainant has registered, or applied for registration of, a range of trademarks consisting of or containing the word "TELSTRA", in numerous other countries around the world, such as Brunei, Cambodia, France, Germany, Hong Kong, Indonesia, Ireland, Japan, Kazakhstan, Kiribati, Korea, Laos, Malaysia, Mauritius, New Zealand, Papua New Guinea, People�s Republic of China, South Africa, Russian Federation, Saudi Arabia, Singapore, Taiwan, The Philippines, Tonga, United Kingdom, Vanuatu, Vietnam and Western Samoa. In addition, the Complainant has obtained a registered Community Trade Mark for a trademark including the word "TELSTRA". Details of the trademark registrations in countries outside Australia are set out in Annexures K and L to the Complaint.

Complainant�s Domain Names and Web Sites

The Complainant is the registrant of the following domain names containing the word "TELSTRA":-
-
-
-
-
-; and
-

For several years, the Complainant has operated its principal website at , followed by . In December 1999, the Complainant relaunched its website at (to which now resolves). One of Australia�s leading national newspapers, The Australian, described this at the time as "the mother of all websites". The site includes electronic customer services for its fixed-line and mobile-phone customers, news and other entertainment services, as well as combining its White Pages directories and Yellow Pages directories which previously were accessible only through separate sites located respectively at and . Use of the various Telstra websites continues to grow at a rapid rate. Telstra�s websites received between 11 million and 22 million hits per month throughout the year 2000. During September 2000, the site was the fourth most frequently visited website in Australia.

The Complainant rigorously protects its intellectual property and makes strenuous efforts to monitor the activities of potential infringers both in Australia and overseas. On the basis of its research, the Complainant is confident that it is the only entity (other than Telstra�s subsidiaries and licensees) legitimately using "TELSTRA" as a trade mark or service mark in the world. Amongst other things, the Complainant has successfully secured orders from the Australian Federal Court for the transfer of in Proceeding VG 1 of 2000 and has successfully used the ICANN internet dispute resolution process to obtain orders for the transfer of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003), , Telstra Corporation Limited v. Barry Cheng Kwok Chu, WIPO Case No. D 2000-0423, , Telstra Corporation Limited v. Heaydon Enterprises, WIPO Case No. D2000-1672, , Telstra Corporation Limited v. Kandasamy Mahalingam, WIPO Case No. D2000-0999, , , Telstra Corporation Limited v. Brett Micallef, WIPO Case No. D2000-0919, , , , , , Telstra Corporation Limited v. Peter Lombardo & Ors, WIPO Case No. D2000-1511, , Telstra Corporation Limited v. Domain-Broker-Labs, WIPO Case No. D2000-1789, , Telstra Corporation Limited v. Warren Bolton, Bolton Consulting Pty Ltd, WIPO Case No. D2000-1293, , Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046 and , Telstra Corporation Limited v. Mr. Jeon, WIPO Case No. D2001-1161 to it.

History of the Domain Name

The domain name was registered on March 27, 2001, and the current owner according to the WhoIs database is "Zanzibar IT Computer Services".

This date of registration coincides with the date upon which Telstra�s Chief Executive Officer announced the formation of Telstra International by way of a public press release (a copy of the press release comprises Annexure I to the Complaint).

The Complainant became aware of the registration of the domain name in late March 2001. At this time, the domain name resolved to a web site that contained the message "You have reached the future site of: ", advertisements for "", and links to web sites under a number of retailing and service industry headings (such as "electronics", "shopping", "gifts" and "computers"). (A printout of the web page as it appeared on April 3, 2001 comprises Annexure N to the Complaint).

Since at least the end of October, the web page at has been modified to contain the message "Welcome to telstrainternational" and to provide links to various telecommunications-related web sites under headings such as "phone company", "telephone service". All of these links are stated to be "web sites related to: telstrainternational", however, none of the links have been authorized by, nor are in any way connected to Complainant. The links revert to web pages which advertise the services of telephone companies such as Verizon Wireless and PowerNet Global, both being competitors of the Complainant. Some printouts of the web page and the related links pages as they appeared in December 2001 comprise Annexure O to the Complaint.

On October 12, 2001, an authorized representative of the Complainant sent a "cease and desist" letter to the Respondent by international registered post to the address provided on the WhoIs record for the domain name and by electronic mail. A copy of this letter comprises Annexure P to the Complaint.

On October 28, 2001, the Respondent sent a reply by electronic mail in which he confirmed that he was the registrant of the domain name , and in which he claimed that he had no intention of using the domain name to claim an association with Telstra. Rather, the Respondent asserted that he had plans to use the domain name for the purpose of promoting "Tim�s Excellent List of Super-Terrific Restaurants in America International". Nevertheless, the Respondent stated that he would be willing to transfer the domain name to Telstra, subject to Telstra providing "letters of explanation" about certain matters from the President of Telstra International and from the Chief Executive Officer of Telstra. Such matters related to the President of Telstra International failing to secure the domain name before launching the new business and the "dismal performance of the Telstra share price in recent years". A copy of the Respondent�s response is attached as Annexure Q to the Complaint.

On November 1, 2001, Telstra�s representative sent another "cease and desist" letter to the Respondent by international registered post to the same address as noted previously and by electronic mail. The Respondent was informed in this letter that, while Telstra was not prepared to meet the Respondent�s conditions for transfer of the domain name, it was prepared to reimburse him for his documented out-of-pocket costs associated with registration of the domain name. A copy of this letter comprises Annexure R to the Complaint. As at the date of this Complaint, the Respondent has not replied to Telstra�s most recent letter.

A current search of the website shows that it has been modified to display the message "Coming soon � Tim�s Excellent List of Super Terrific Restaurants in America (International)". It also contains a mechanism recording the number of visitors to the web site but does not have any other content. A printout of the web site as it appeared on January 24, 2002 comprises Annexure S to the Complaint.

Respondent�s Identity and Activities

The Respondent is the registrant of the domain name , the Registrar of which is Tucows, Inc. This domain name does not resolve to an active web site. It contains only a short message ("Coming soon..") quoted above and a mechanism recording the number of visitors to the web site.

 

5. Parties� Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are applicable to this dispute.

Identical or Confusingly Similar Domain Name

In relation to paragraph 4(a)(i) of the Policy, the Complaint contends that the relevant part of the domain name at issue is , and that this is clearly identical with or confusingly similar to the Complainant�s extensive portfolio of "TELSTRA" trademarks which have been registered on an international scale (details of which are provided as Annexures J, K and L), and is identical to part of the names of certain Telstra subsidiary companies. Further reasons for this assertion are as follows:

The word "TELSTRA" is an invented or coined word. The domain name clearly incorporates Telstra�s "TELSTRA" trademark, and the domain name has no sensible meaning but for its association to Telstra�s trade marks. The word "TELSTRA" is not one that traders would legitimately choose unless they were trying to create a false association with Telstra.

The word "INTERNATIONAL", though commonly used in other contexts, when used in combination with the unique "TELSTRA" mark 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 absence of a space between "TELSTRA" and "INTERNATIONAL" in the domain name form is irrelevant: Telstra Corporation Limited v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423 (); and Telstra Corporation Limited v. Heaydon Enterprises, WIPO Case No. D2000-1672 ().

The domain name is identical to the first part of the names of a number of Telstra�s subsidiary companies, including Telstra International Limited and Telstra International (HK) Holdings Limited which are registered and owned by Complainant.

Respondent has no rights or legitimate interests in respect of the Domain Name

In relation to paragraph 4(a)(ii) of the Policy, the Complainant contends that the Respondent has no rights and no legitimate interest in the domain name . The Complainant motivates its contentions on the following grounds:

The paragraph 4(c)(i) of the Policy does not assist the Respondent, as prior to being put on notice of Telstra�s complaint, the Respondent had not used, and had not made any demonstrable preparations to use, the domain name in connection with the bona fide offering of goods or services. The Complainant�s use of "TELSTRA" predates the registration of the domain name, and the Respondent does not have any association with Telstra.

As the domain name has not and does not resolve to an active website, the Respondent cannot be said to be "making fair use" of the domain name. However, Complainant submits that, even if the Respondent can establish that he is "making fair use" of the domain name, the Respondent is not aided by paragraph 4(c)(iii) of the Policy because some time the content of the web site misleadingly diverted customers to other telecommunication web sites and information about competitors of Telstra such as Verizon Wireless.

The current content of the web site, which provides the "coming soon" notice for "Tim�s Excellent List of Super-Terrific Restaurants in America (International)" cannot serve as evidence of a "legitimate" interest in the domain name. This is because it is a recent change to the website, which came about only after the Respondent was put on notice by Telstra. Accordingly, Complainant submits that the new content of the website is not evidence of a legitimate interest in the domain name but instead evidences a deliberate attempt by the Respondent to defeat any complaint made against him. The purported claim that the domain name is an acronym for "Tim�s Excellent List of Super Terrific Restaurants in America" puts this case in the category of cases where the Respondent is "an abusive registrant seeking to find some - or any - excuse for its registration" Telstra Corporation Limited v. Heaydon Enterprises, WIPO Case No. D2000 - 1672 () where the respondent argued that his nickname was "TheTel". (See also Telstra Corporation Limited v. Barry Cheng Kwok Chu, WIPO Case No. D2000 � 0423 () where the respondent argued that the domain name was his business name in Chinese). As in those cases, the Respondent is not making a legitimate use of the domain name.

Further, the Complainant submits that any current or future offering of goods or services by the Respondent from the domain name could not be bona fide within the meaning of paragraph 4(c)(i) of the Policy as:

The Complainant has a very strong reputation in Australia and internationally in its "TELSTRA" marks, and the Respondent knows this because:

(i)he is a shareholder of Telstra; and

(ii)the Respondent has previously published strong opinions about Telstra (refer to Annexure C to the Complaint);

The Respondent has, in any event, been put on notice of Telstra�s "TELSTRA" marks by the "cease and desist" letters sent to the Respondent by Telstra�s representative; and

Telstra�s "TELSTRA" marks are so distinctive that no one could legitimately choose to use "TELSTRAINTERNATIONAL" unless trying to trade off Telstra�s rights. The Complainant refers to WIPO cases Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003 (); Telstra Corporation Limited v. Heaydon Enterprises, WIPO Case No. D2000-1672; The British Broadcasting Corporation v. Jamie Renteria, WIPO Case No. D2000-0050.

Paragraph 4(c)(ii) of the Policy does not apply favourably to the Respondent, as Telstra�s investigations indicate that, other than registering the domain name, the Respondent has not been known as, and has not carried on business in any form as, (or any other name consisting of "TELSTRA" or "TELSTRA INTERNATIONAL"). Further, it should be noted that Telstra has not licensed the Respondent to carry on any business or engage in any activity (including the operation of an on-line directory of telecommunications-related web sites) using the name , or any other name consisting of "TELSTRA" or "TELSTRA INTERNATIONAL".

It is relevant that the Complainant�s use of "TELSTRA" marks predates the registration of the domain name, and that the Respondent does not have any association with Telstra. The Complainant refers to Compaq Computer Corporation v. Boris Beric, WIPO Case No. D2000-0042.

The Complainant submits that paragraph 4(c)(iii) of the Policy does not assist the Respondent. The Complainant refers to the decision in Telstra Corporation Limited v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423 () in which the Panel held:

"there is currently no use of the Domain Name by the Respondent and for that reason alone, he fails to establish the ground [in paragraph 4(c)(iii)]. Clause (iii) clearly refers to the present tense of �making� a fair use� and this contrasts with clause (i) which refers to �use� or �demonstrate preparations to use�.

Accordingly, as the domain name has not and does not resolve to an active website, the Respondent cannot be said to be "making fair use" of the domain name. However, the Complainant submits that, even if the Respondent can establish that he is "making fair use" of the domain name, the Respondent is not aided by paragraph 4(c)(iii) of the Policy as for some time the content of the web site misleadingly diverted customers to other telecommunication sites and information about overseas competitors of Telstra such as Verizon Wireless via a series of links (Annexure N to the Complaint).

The Complainant also referred to the grounds submitted in Complaint with regard to the bad faith use of the domain name.

Domain Name Registered and Used in Bad Faith

In relation to paragraph 4(a)(iii) of the Policy, the Complainant contends that evidence of bad faith registration and use is established by the following facts:

The Respondent knew of Telstra and its reputation in the TELSTRA marks because he:

(i)used to live in Australia;

(ii)is a shareholder of Telstra; and

(iii)has published his opinions of Telstra on the Internet (Annexure C to the Complaint);

The Respondent registered the domain name at issue on the same day that Telstra�s Chief Executive Officer publicly announced the launch of Telstra International Limited; and

The Respondent�s response to Telstra�s cease and desist letter, in effect, held Telstra to ransom by only indicating an intent to transfer if certain conditions were met relating to the explanation of business decisions made by Telstra.

In particular, the tone of the Respondent�s response to Telstra implies that the Respondent�s intention in registering this domain name was to embarrass Telstra and cause damage to it. This is particularly apparent from the fifth paragraph of the Respondent�s response in which he states:

"� as the owner of , I would like a written explanation from the Mr Dick Simpson, the president of Telstra International, discussing why Telstra failed to secure the domain name before launching the new business division�"

This response indicates a strong awareness of the operations of Telstra and supports the submission that it is more than a mere coincidence that the domain name was registered on the same day that Telstra announced its launch of Telstra International Limited. In fact the Respondent�s response to Telstra�s cease and desist letter as a whole highlights his bad faith registration and use of the domain name (Annexure Q to the Complaint).

The Complainant also submits that the Respondent�s use of the domain name is clearly an attempt to attract internet users to the Respondent�s on-line location by creating a likelihood of confusion with Telstra�s name and trade marks within the meaning of paragraph 4(b)(iv) of the Policy. It is likely that users of WhoIs tools will be led to believe that the Respondent is Telstra or is associated with Telstra (Stralfors AB v. PDS AB, WIPO Case No. D2000-0112; Forte (UK) Limited v. Eugenio Ceschel, WIPO Case No. D2000-0283). This is particularly so as until January 2002 the web site contained a directory of links to sites relating to a range of providers of telecommunications goods and services. Further, as these third party web site links related to the web sites for competitors of Telstra, this evidences bad faith use of the domain name by the Respondent. Again, it appears to be an attempt to damage the Complainant.

The Complainant also submits that this domain name registration by the Respondent causes an erosion of the exclusive goodwill in the "TELSTRA" name and trade marks which damages, or is likely to damage, Telstra: see British Telecommunications Plc and Other v. One In A Million Ltd and Others (1999) 42 IPR 289; Fletcher Challenge Ltd v. Fletcher Challenge Pty Ltd, (1981) 1 NSWLR 196 and Oggi Advertising Ltd v. McKenzie and Others, (1999) 44 IPR 661.

Further, in establishing that the Respondent has engaged in bad faith use and registration of the domain name, the Complainant also relies on the finding of bad faith in the decision (WIPO Case No. D2000-0423) where the Panel stated:

"� domain names are often used internationally and � an Australian resident effecting an inquiry based on "telstrashop" could be led to any website to which the Respondent�s domain name may resolve on the future."

"� Telstra�s case� outside the scope of clauses 4(b)(i) to (iv) but under the general provision paragraph 4(a)(iii), ie the general notion of, bad faith, must reduce to the proposition that:

(a)at least for a trade mark proven to be famous or well-known in one economically significant country, ie Australia in this case.

(b)where the nature of Telstra�s business is inherently of or susceptible to being of an international character, and [where the Respondent lives in Australia] and

(c)where Telstra has made proper substantial steps towards protecting its trade marks with a view to conducting business in many other jurisdictions, then

(d)in the relevant sense, bad faith is prima facie proven against a Respondent who asserts an intention to use the trade mark to characterize a domain name."

In relation to the Respondent�s current use of the web site, the Complainant submits that the inclusion of a counter to monitor the number of visitors to the site, could constitute an attempt by the Respondent to show the Complainant the popularity of the domain name and may be construed as an offer to sell Chernow Communications Inc v. Jonathan Kimball, WIPO Case No. D2000 - 0119 (para 6.16) and Home Interior & Gifts, Inc. v. Home Interiors, WIPO Case No. D2000-0010.

Finally, the Respondent�s bad faith is further reinforced by the fact that he has actively provided inaccurate details in registering the domain name (see paragraph 9 above). Providing false contact details on the WhoIs register has been found to be indicative of bad faith: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000 - 0003 ().

Having regard to all the circumstances mentioned above, the Complainant therefore submits that the domain name has been registered and used in bad faith within the meaning of paragraph 4(b) of the Policy.

B. Respondent

The Respondent did not file a Response to the Complaint.

 

6. Discussion and Findings

Paragraph 4 (a) of the Policy directs that the Complainant must prove each of the following elements:

(i)that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii)that the Respondent has no legitimate interests in respect of the domain name; and

(iii)that the domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Administrative Panel to be present, shall be evidence, for the purposes of paragraph 4(a)(iii) of the Policy, of the registration and use of a domain name in bad faith.

Identical or Confusingly Similar Domain Name

The domain name at issue is . The relevant part of this domain name is "telstra". The Administrative Panel finds that this part of the domain name is identical to the numerous trademark registrations of the word "TELSTRA" which the evidence shows have been registered by the Complainant on an extensive international scale. In addition, the Administrative Panel finds that the whole of the domain name is confusingly similar to those trademark registrations.

Respondent�s Rights or Legitimate Interests in the Domain Name

The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name. The Complainant has evidenced that there is no active use of the domain name which could constitute a fair use of the domain name. The Respondent has not been known as, and has not carried on business in any form as or any other name consisting of "TELSTRA" or "TELSTRAINTERNATIONAL". The Administrative Panel finds that the Respondent�s purported claim that the domain name is an acronym for "Tim�s Excellent List of Super Terrific Restaurants in America" cannot be regarded as justification for legitimate use but rather shows that the Respondent is "an abusive registrant seeking to find some - or any - excuse for its registration". The Respondent is not making a legitimate use of the domain name. In light of (i) the fact that the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to apply for or use any domain name incorporating any of those marks, and (ii) the fact that the word "TELSTRA" appears to be an invented word, and as such is not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant, the Administrative Panel finds that the Respondent has no rights or legitimate interests in the domain name.

Domain Name Registered and Used in Bad Faith

The Administrative Panel finds that the Complainant has evidenced that the Respondent has registered and used the domain name in bad faith by the following facts:

As the trademarks are proven to be famous or well-known at least in one economically significant country, i.e. Australia, and the Complainant has made proper substantial steps towards protecting its trade marks with a view to conducting business in many other jurisdictions, the Complainant also operates in substantial array of businesses in a number of Asia-Pacific, North-American and European countries and the nature of the Complainant�s business in inherently of or susceptible to being of an international character, the Panel finds that the bad faith is prima facie proven against a Respondent who asserts an intention to use the trade mark to characterize a domain name (cf.Telstra Corporation Limited v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423). The Complainant�s "TELSTRA" marks are so distinctive that no one could legitimately choose to use "TELSTRAINTERNATIONAL" unless trying to trade off the Complainant�s rights (Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003 (); Telstra Corporation Limited v. Heaydon Enterprises, WIPO Case No.D2000-1672; The British Broadcasting Corporation v. Jamie Renteria, WIPO Case No.D2000-0050.

Further, the written evidence submitted by the Complainant clearly shows that the Respondent knew of Telstra and its reputation in the "TELSTRA" marks: the Respondent used to live in Australia; is a shareholder of Telstra; and has published his opinions of Telstra on the Internet. The Respondent registered the domain name at issue on the same day that the Complainant�s Chief Executive Officer publicly announced the launch of Telstra International Limited; and the Respondent�s response to the Complainant�s cease and desist letter indicates an intent to transfer the domain name only if certain conditions were met relating to the explanation of business decisions made by the Complainant. Respondent�s response indicates a strong awareness of the operations of Telstra and supports the submission that it is more than a mere coincidence that the domain name was registered on the same day that the Complainant announced its launch of Telstra International Limited. The Respondent�s response to the Complainant�s cease and desist letter as a whole highlights his bad faith registration and use of the domain name (Annexure Q to the Complaint).

The Administrative Panel finds that the Respondent�s use of the domain name is clearly an attempt to attract internet users to the Respondent�s on-line location by creating a likelihood of confusion with Telstra�s name and trademarks within the meaning of paragraph 4(b)(iv) of the Policy. It is likely that users of WhoIs Tools will be led to believe that the Respondent is Telstra or is associated with Telstra (cf Stralfors AB v. PDS AB, WIPO Case No. D2000-0112; Forte (UK) Limited v. Euenio Ceshel, WIPO Case No. D2000-0283). This is particularly so as until January 2002, the web site contained a directory of links to sites relating to a range of providers of telecommunications goods and services. As these third party web site links related to the web site for competitors of the Complainant, clearly show that the Respondent has registered and used the domain name for the purpose of disrupting the business of the Complainant.

The domain name registration by the Respondent causes an erosion of the exclusive goodwill in the "TELSTRA" name and trade marks which damages, or is likely to damage the Complainant.

As regards the inclusion of a counter to monitor the number of visitors to the site without other content, the Panel finds that this could constitute an attempt by the Respondent to show Telstra the popularity of the domain name and may be construed as an offer to sell and indicates therefore the bad faith registration and use of the domain name. The Panel refers to Chernow Communications Inc v. Jonathan Kmball, WIPO Case No.D2000-0119 and Home Interior & Gifts, Inc. v. Home Interiors, WIPO Case No.D2000-0010.

Having regard to all the circumstances mentioned above the Administrative Panel finds that the domain name has been registered and used in bad faith within the meaning of paragraph 4(b) of the Policy.

Consequently, all the prerequisites for cancellation or transfer of the domain name according to paragraph 4(i) of the Policy are fulfilled. The Complainant has requested that the domain name at issue be transferred to the Complainant.

 

7. Decision

The Administrative Panel makes its decision in accordance with paragraph 15 of the Rules on the basis of the Complaint, the Policy, The Rules and the Supplemental Rules. The Administrative Panel decides that the Complainant has proven each of the three elements in paragraph 4(a) of the Policy. Accordingly, the Administrative Panel requires on the basis of paragraph 4(i) of the Policy that the domain name be transferred to the Complainant.

 

 

Kristiina Harenko
Sole Panelist

Dated: April 24, 2002

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