WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TELUS Corporation v. Invex Marketing Inc.
Case No. D2006-1586
1. The Parties
The Complainant is TELUS Corporation, Vancouver, British Columbia, Canada, represented by Robert Finta, Canada.
The Respondent is Invex Marketing Inc., Mick Kohut, Alberta, of Canada.
2. The Domain Name and Registrar
The disputed domain name is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2006. On December 15, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On December 15, 2006, Go Daddy Software 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 Respondent of the Complaint, and the proceedings commenced on December 29, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was January�18, 2007. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 22, 2007.
On January 22, 2007, Respondent forwarded an e-mail to the Center inquiring if Respondent could get an extension of time to reply to the Complaint. Respondent stated “I own for many years and in no way did I violate any laws”. Respondent also submitted that “.org is one of two hundred top level domain names and Telus Corp. certainly didn’t register them all”. On January 23, 2007, the Center informed Respondent that should Respondent wish to file a late submission with the Center, it will be at the sole discretion of the Administrative Panel once appointed to decide whether it will be considered in arriving at a decision. A copy of Respondent’s request for an extension of time was e-mailed by the Center to Complainant. No further correspondence took place between the parties and the Center. Paragraph 5(d) and 10(c) of the Rules contemplate the granting of extensions of time to file the Response “in exceptional cases.” The Complaint and Annex 3 to the Complaint disclose that Complainant’s TELUS trademarks were registered and were in use for many years in Canada prior to Respondent’s registration of the domain name . The TELUS trademarks were widely known in Canada at the date of registration of the domain name in dispute. Respondent is located in Edmonton, Alberta the same city in which the Complainant’s head office was located n 1998. The submissions of Respondent in support of the request for an extension of time to file the Response fall short of “exceptional circumstances.” The Panel refuses the request for an extension of time to file the Response.
The Center appointed Ross Carson as the sole panelist in this matter on January�31,�2007. 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
Complainant is a leading national telecommunications company in Canada, with $8.5 billion of annual revenue and 10.5 million customer connections including 4.9 million wireless subscribers, 4.6 million wireline network access lines and 1.1 million Internet subscribers. Complainant provides a wide range of communications products and services in Canada including data, Internet protocol (IP), voice, entertainment and video. Complainant has contributed more than $62 million to charitable and non-profit organizations in Canada over the last five years, and has established seven Community Boards across Canada to lead its local philanthropic initiatives.
Complainant is a public company that trades on the Toronto Stock Exchange and the New York Stock Exchange.
The name “Telus” was developed for Complainant in or about 1990, in conjunction with the advice of a consultant. It is premised on telecommunications and universality.
Until the merger of Telus Corporation and BC TEL in 1998, the head of Complainant was in Edmonton, Alberta.
Complainant is widely known in Canada and particularly so in Edmonton, Alberta where Complainant maintained its head office until 1998.
The domain name in dispute was registered on June 4, 1998. Respondent is located in Edmonton, Alberta. (Annex 1 to Complaint).
Complainant is the owner of numerous registered trademarks for the trademark TELUS or including the word “telus” as the distinctive element. Complainant is the owner of Canadian Trademark Registration No.TMA421361 for TELUS registered for management services; namely management of telecommunications companies. The application was based on use in Canada since at least January 18, 1991. The trademark was registered on December 24, 1993. Complainant is also the owner of Canadian Trademark Registration No. TMA472184 for the trademark TELUS CORPOATION in stylized form. The trademark was applied for and registered in relation to a broad range of telecommunications services. The trademark application was filed in Canada on November 23, 1990, and registered in Canada on March 6, 1997. Complainant is also the owner of Canadian Trademark Registration No. TMA490554 for the trademark TELUS in combination with a stylized. The trademark is registered for a long list of telecommunication services. The trademark was registered in Canada on February�26,�1998. (Annex 3 to Complaint).
5. Parties’ Contentions
A. Complainant
A.1 Identical or Confusingly Similar
Complainant states that it owns or has applied for in excess of 150 trademarks and service marks for or including TELUS including the registered trademarks reviewed in paragraph 4 immediately above.
Complainant submits that the domain name in dispute is identical and/or confusingly similar to the complainant’s TELUS trademarks and service marks listed above (Policy, para. 4(a)(i), Rules, paras. 3(b)(viii), and (b)(ix)(1)).
A.2 No Rights or Legitimate Interests in respect of the Domain Name
Complainant submits that Respondent does not currently use, and has made 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.
Complainant states that on August 21, 2001, Complainant corresponded with Respondent demanding the return of the domain name, to which Respondent replied on November 12, 2001 (Annex 4 and 4B to this complaint).
Complainant states that Respondent secured the domain name in June 1998, but the domain name has remained parked since registration. For many years the domain name resolved to a non-monetized “coming soon” site provided by the Registrar. Since in or about 2005, the domain has resolved to a monetized site which advertises products and services of Complainant’s competitors, among others.
Complainant states that Respondent, as an individual, business or other organization, has never been commonly known by the domain name. Complainant further submits that Respondent has no legitimate rights to the domain name in question. Respondent has owned the domain name since 1998, and never developed a website representing the domain name, has never been commonly known by the domain name, and has not acquired any trademark or service mark rights in the name.
Complainant states that the contested domain name in dispute was registered over 8 years after Complainant began using the TELUS trademarks in Canada.
Complainant further submits that there is no legitimate use for the contested domain name except in conjunction with the business of Complainant. Because of the North American fame of the TELUS trademark, only Complainant has a legitimate reason to include the TELUS trademark in a domain name.
A.3 Registered and Used in Bad Faith
Complainant submits that Respondent registered the domain name in dispute for the sole purpose of preventing Complainant, the owner of the afore-mentioned trademarks from reflecting the mark in a corresponding domain name.
Complainant further submits that Respondent has resolved the domain to a parked site. Until 2005, the domain name terminated at a non-monetized parked site provided by the Registrar. Since in or about 2005, the domain name has resolved to a monetized site which advertises products and services of Complainant’s competitors among others. The website includes direct links to some of Complainant’s competitors.
Complainant submits that domain name parking is a widely known advertising practice used primarily by domain name registrars and internet advertising publishers to monetize type-in traffic visiting an under-developed domain name. Internet advertisers paying for such service will pay the Registrar or the Registrant based on the number of visits.
Complainant submits that the parked site to which the domain name in dispute resolves contains advertising, listings and links to a competitor of Complainant, among others. Respondent has either given permission to the Advertisers directly, or Respondent has provided permission to its Registrar Go D to point the domain name or DNS to one of Go Daddy’s or Go Daddy’s affiliates web pages, together with permission that they may place advertising on the Respondent’s web page.
Complainant submits that directing consumers who are seeking a TELUS related website to those of competitors is likely to create confusion with Complainant’s mark by suggesting a partnership or affiliation that doesn’t exist, and will dilute the value of the goodwill associated with the mark.
Complainant states that either Respondent or the Registrar will be paid by the advertisers, based on how many visitors click on the site or on how many links have been visited. Respondent has intentionally attempted to attract for commercial gain, Internet users to Respondent’s website, by misleadingly diverting consumers seeking Complainant to an unauthorized site populated by Complainant’s competitors. In so doing, Respondent or its Registrar will receive commercial gain through the use of Complainant’s trademarks and name. Thus, it is submitted that the Respondent’s registration is also for commercial gain.
Complainant submits that Respondent has registered a domain name virtually identical with Complainant’s marks for the purpose of diverting consumers seeking access to information regarding TELUS and that this creates confusion, and damage to the Complainant.
Complainant submits that only Complainant may legitimately use the contested domain name, it is clear that Respondent acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant or to a competitor of Complainant for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph�15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph�4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The fact that Respondent did not submit a Response does not automatically result in a decision in favor of the Complainant. The failure of Respondent to file a Response results in the Panel drawing certain inferences from Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. Charles Jourdan Holding AG v. AAIM, WIPO Case No.�D2000-0403.
A. Identical or Confusingly Similar
Pursuant to Paragraph�4(a)(i) of the Policy, the Complainant must establish rights in a trademark and secondly that the domain name in dispute is confusingly similar to the trademark in which Complainant has rights.
Complainant has established that it is registered as the owner of numerous registrations in Canada for the trademark TELUS alone and in combination in both word and stylized form registered in relation to a broad range of telecommunications services. The trademark TELUS was used by Complainant in Canada in association with the services for which it is registered in Canada many years before Respondent registered the domain name in dispute. The distinctive element of the domain name in dispute and the registered trademark are identical. The addition of “.org” is irrelevant. Rollerblade, Inc. v. Chris McCrady, WIPO Case No.�D2000-0429 (addition of “.com” to mark is irrelevant).
The Panel finds that Complainant has proven that the domain name in dispute is confusingly similar to Complainant’s registered trademarks for or including TELUS as the distinctive element.
B. Rights or Legitimate Interests
Pursuant to paragraph�4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has established that TELUS is Complainants house mark, which has been extensively used in Canada in association with telecommunication services since 1990. Complainant’s current annual revenue is 8.4 billion dollars Canadian. Complainant has 4.7 million wireless subscribers and 1.0 million Internet subscribers in Canada. Complainants head office was located in Edmonton, Alberta, until 1998. Respondent is located in Edmonton, Alberta.
On August 22, 2001, Complainant sent a cease and desist letter to Respondent alleging that the domain name in dispute was improperly registered and that the domain name in dispute is an infringement of Complainant’s rights in the TELUS trademarks owned by Complainant. (Annex 4 B to Complaint). On November 12, 2001, Respondent replied confirming that it was aware that Telus is a Canadian company. In respect of an allegation with respect to damages made by Complainant in the cease and desist letter Respondent inquired: “Could you please let me know what specific damages are you talking about since I don’t even have a website running?” Respondent further stated: “I registered because I was looking for a short name (like ) but as you’re probably aware most of the short names are taken.” (Annex 4 to the Complaint). Respondent’s statements in its letter of November 12, 2001 do not establish Respondent’s rights or legitimate interests in the domain name in dispute at or prior to the date of the letter.
Respondent does not currently use, and has made 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.
Respondent, as an individual, business or other organization, has never been commonly known by the domain name.
The contested domain name was registered over 8 years after Complainant began using the TELUS trademark in Canada.
The Panel finds that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the domain name in dispute which is sufficient to switch the burden of proof to Respondent on this issue.
The domain name in dispute is used by Respondent for a website that includes links promoting products offered by others including links to competitors of Complainant. The use of the domain name in dispute to promote products of competitors to Complainant is not a legitimate use of the domain name.
The Respondent did not file any evidence to demonstrate Respondent’s rights or legitimate interests in the domain name in dispute as it was entitled to do pursuant to paragraph�4(c) of the Policy.
The Panel finds that Complainant has proven that Respondent does not have any rights or legitimate interests in the domain name in dispute.
C. Registered and Used in Bad Faith
Pursuant to Paragraph 4(a)(iii) of the Policy Complainant must prove that Respondent has registered and is using the domain name in dispute in bad faith.
Registered in Bad Faith
Complainant has established that it is registered as the owner of numerous registrations for the trademark TELUS alone and in combination in both word and stylized form registered in relation to a broad range of telecommunications services. The trademark TELUS was extensively used by Complainant in Canada in association with the services for which it is registered in Canada many years before Respondent registered the domain name in dispute. It is not possible to conceive of a plausible circumstance in which Respondent could not have been aware of Complainant and its registered and common law trademarks at the date of registration of the domain name in dispute. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Telus Corporation v. Baswell Wright, WIPO Case No. D2006-1200.
Used in Bad Faith
Internet users who access the website associated with the domain name in dispute are directed to a webpage including advertising and links to websites of persons and companies including competitors of Complainant having no association or connection with Complainant. The Panel infers from the evidence that the authorization of others to advertise on the website in dispute is in return for click through payments received by Respondent. Using the confusingly similar domain name in dispute to direct Internet users seeking a website of Complainant to websites of others including competitors of Complainant (Annex 1 to Complaint) for compensation is evidence of bad faith. Royal Bank of Canada vacant, WIPO Case No. D2003-0031.
The Panel finds that Complainant has proven that Respondent registered and is using the domain name in dispute in bad faith.
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.
Ross Carson
Sole Panelist
Dated: February 14, 2007
Full & Egal Universal Law Academy