WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Telus Corporation v. Baswell Wright
Case No. D2006-1200
1. The Parties
The Complainant is Telus Corporation, of Vancouver, British Columbia, Canada.
The Respondent is Baswell Wright, of Ontario, Canada.
2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Go D, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September�18,�2006. On September�19,�2006, the Center transmitted by email to Registrar a request for registrar verification in connection with the Domain Name at issue. On September�20,�2006, Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September�28,�2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October�18,�2006. The Response was filed with the Center on October�18,�2006.
The Center appointed Mark Ming-Jen Yang as the sole panelist in this matter on November�1,�2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant has the following trademark registrations based on the mark TELUS, for a range of telecommunications services and wares (collectively herein, the “Trademark”). The wares and services and other details of each registration are set out in the Complaint and also can be found at the websites of the Canadian and US Trademark Offices.
TELUS.COM
Canadian Registration No.: TMA526,674
TELUS.NET
Canadian Registration No.: TMA572,064
TELUS CORPORATION & design
Canadian Registration No.: TMA472,184
TELUS (design)
Canadian Registration No.: TMA490,554
MYTELUS
Canadian Registration No.: TMA565,319
MYTELUS.COM
Canadian Registration No.: TMA565,320
TELUS
US Registration No.: 2396640
TELUS
US Registration No.: 2792176
All the above registrations were registered before the Respondent registered the Domain Name on October�29,�2005.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the Domain Name is confusingly similar to its Trademark that it has rights in, that the Respondent has no legitimate interest in the Domain Name, and that the Respondent registered and uses the Domain Name in bad faith.
B. Respondent
The Respondent did not explicitly respond to the Complaint in the itemized way the Complaint is set out, following the Policy, paragraph 4. But the Panel has thoroughly read the Response and interprets the Response as contending that the Domain Name is not confusingly similar to the Trademark, that the Respondent has a legitimate interest in the Domain Name and that the Respondent did not register and use the Domain Name in bad faith.
6. Discussion and Findings
A. Identical or Confusingly Similar
Based on the Complainant’s Trademark, the Panel finds that the Complainant has rights in a number of marks containing the term “telus”, including the marks TELUS and TELUS.COM. The Panel finds that the disputed Domain Name is confusingly similar to a number of the Complainant’s marks including the TELUS mark. The disputed Domain Name is only the concatenation of “canada” to the component “telus”, where the later word is the distinctive part of the Trademark and the former word is a generic geographical suffix being the country where both parties reside. It is also well established that the addition of a gTLD such as “.com” can be disregarded for the purpose of this comparison.
The Respondent did argue that, “... A quick search on the Internet reveals several domain names that I believe are more of a direct infringement on Telus’ trademarks, which do not appear to be registered to Telus Corporation ie: . Similar searches also reveals numerous domain names that are currently available for registration (which I have not registered) that are more “identical or confusingly similar to Telus’ own domain name”. The Panel does not consider the Respondent’s argument that there are possibly “more confusing similar” domain names available to the Respondent, to be a legitimate argument against a finding that the disputed Domain Name is confusingly similar to the Domain Name.
The Panel finds that the Policy, paragraph 4(a)(i) is satisfied by the Complainant.
B. Rights or Legitimate Interests
The Policy, paragraph 4(c) provides that “Any of the following circumstances, in particular but without limitation… shall demonstrate….rights or legitimate interests to the domain name” for the purposes of the Policy, paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant made the following contentions in respect of the Policy, paragraph 4(a)(ii).
“(1) The Respondent does not currently use, and has no demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services.
(2) The Respondent, as an individual, business or other organization, has never been commonly known by the domain name.
(3) The contested domain name was registered over 10 years after the Complainant began using the TELUS trademark.
(4) There is no legitimate use for the contested domain name except in conjunction with the business of the Complainant. Because of the North American fame of the TELUS trademark, only the Complainant has a legitimate reason to include the TELUS trademark in a domain name.
(5) TELUS is the largest telecommunications company in Western Canada and the second largest in the country, with $8.4 billion of annual revenue, 4.7 million wireless subscribers, 1.0 million Internet subscribers, and 4.6 million network access lines. The company provides Canadians with a wide range of wireline and wireless telecommunications products and services including data, Internet protocol (IP), voice, video and entertainment services, utilizing advanced IP-based technologies. The complainant is widely recognized in Canada.”
The Panel finds that the Complainant has presented a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, which is sufficient to shift the burden of rebuttal to the Respondent on this element.
The Panel finds that the Respondent has not demonstrated that it has rights and legitimate interests in the Domain Name in accordance with the Policy, paragraph 4(c). The Respondent explained that it registered the Domain Name because it wanted to serve better its potential customers and thought that the Domain Name was “the most efficient medium for communicating” information with them about new telecommunications goods and services it would seek (but had not yet obtained) from the Complainant. Such use is clearly commercial in nature and cannot be construed as “legitimate noncommercial or fair use” of the Domain Name (paragraph 4(c)(iii)). The Panel concludes, taking into account the finding under 6.C, that the Respondent’s use of the domain name cannot be considered a use of the Domain Name in connection with a bona fide offering of goods or services (paragraph 4(c)(i)). Nor has the Respondent presented any evidence that it was “commonly known” by the Domain Name (paragraph 4(c)(ii)). The Panel finally notes that the domain name currently directs to a parking page displaying sponsored links.
The Panel finds that the Policy, paragraph 4(a)(ii) is satisfied by the Complainant.
C. Registered and Used in Bad Faith
There is no evidence before the Panel to indicate the specific applicability of any of the three illustrative sets of circumstances described in paragraphs 4(b)(i) – 4(b)(iii) of the Policy.
The aforementioned defect in the Complainant’s pleadings and evidence, is enough for the Panel to find that the Complainant has not demonstrated that the Respondent registered the Domain Name for the sole purpose of of selling it.
The Panel finds, taking into consideration the current use of the disputed domain name, that circumstances described in paragraph 4(b)(iv) of the Policy may be present in this case. Specifically, the Respondnet, by using the Domain Name, appears to have intentionally attempted to attract, for commercial gain, Internet users to its webste or other on-line location, by creating a likelihood of confusion with the Complainant’s Trademark, as to the source, sponsorship, affiliation or endorsement of its website or location or a product or service on its website or location.
But paragraph 4(b) of the Policy is, by its terms, “without limitation” and is not exhaustive of the ways in which evidence of registration and use in bad faith may be demonstrated for the purpose of the third element of the Policy.
The Complainant contends that “Only the Complainant may legitimately use the contested domain name”. Although the Panel finds that contention to be meagerly argued, and although the Panel has considered the Respondent’s detailed explanations about his intentions in registering and using the Domain Name, the Panel finds that the Respondent has no conceivable legitimate use for the Domain Name. The Domain Name is a variation of the identity (as manifested in the Trademark) of the second largest telecommunications business in Canada, where both parties reside and continue to do business. Clearly, the Respondent was aware of the Complainant and its Trademark when it registered the domain name. The Respondent’s intentions and plans for the Domain Name explicitly pivot on a favorable authorization by the Complainant to distribute its goods and services through the Respondent, which authorization has been denied and will not be forthcoming. In such circumstances, the Panel finds that the Domain Name was registered and used in bad faith.
There are previous WIPO UDRP decisions that hold that inconceivable legitimate use satisfies the Policy, paragraph 4(a)(iii). For example, the Administrative Panel Decision in Sony Kabushiki Kaisha v. , WIPO Case No. D2000-1074.
Accordingly, the Panel finds that the Policy, paragraph 4(a)(iii) is satisfied by the Complainant.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
Mark Ming-Jen Yang
Sole Panelist
Dated: November 30, 2006
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