WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION TeliaSonera AB v. Hu Li Case No. D2009-1195 1. The Parties
The Complainant is TeliaSonera AB of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services AB, Sweden.
The Respondent is Hu Li of Shanghai, People's Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2009. On September 9, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain name. On September 10, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 14, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 4, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 5, 2009.
The Center appointed Angela Fox as the sole panelist in this matter on October 15, 2009. 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, TeliaSonera AB, is a Swedish provider of mobile and advanced telecommunications services worldwide. Its shares are listed on the NASDAQ QMX Stockholm and NASDAQ QMX Helsinki Stock Exchange. TeliaSonera AB is the result of a widely-publicised merger in December 2002 between two of the leading telecommunications companies in the Nordic region.
The Complainant owns trademark registrations for TELIA in respect of data and telecommunications products and services in Classes 9, 38 and 42 in more than 30 countries. Annexed to the Complaint were copies of registration certificates for TELIA in the United States (Registration No. 1775505) and the United Kingdom (Registration No. 1470488) both filed in 1991, together with a list of registrations for the mark in other countries including Australia, the Benelux, Canada, China, Finland, Norway and Sweden.
The Complainant also owns numerous domain names incorporating “telia”, including which it registered on September 22, 2005.
The WhoIs details for the disputed domain name show that it was registered on April 2, 2009. In fact, though, it appears to have been registered at some time before this, since the Complainant discovered the disputed domain name in January 2009. The disputed domain name resolves to a site offering links to third-party websites with explicit sexual content.
Originally the disputed domain name was registered in the name of a privacy service and the Complainant's lawyers wrote to that service on January 30, 2009, demanding that the domain name be transferred to the Complainant and offering to reimburse any out-of-pocket costs relating to the transfer. No reply was received, but in April 2009 the WhoIs details were updated to show the April 2, 2009 registration date and the Respondent's details. The Complainant sent an identically worded letter to the Respondent on August 24, 2009, but also received no reply.
The Complaint was filed on September 9, 2009. 5. Parties' Contentions A. Complainant
The Complainant submits that the disputed domain name is identical or confusingly similar to its registered TELIA trademark, which the Complainant avers has become well-known through use in the telecommunications sector. The additional element “web” is a generic descriptor relevant to the Complainant's business and will not avoid confusion with the Complainant's TELIA trademark, taking into account its fame.
The Complainant further submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not known by a name corresponding to the domain name, nor has it been authorised or licensed by the Complainant to use the disputed domain name. The Complainant avers that the Respondent must have known of the TELIA mark when it registered the disputed domain name, which it argues is further supported by the similarity of the disputed domain name to the Complainant's own domain name. The Complainant notes that the Respondent is using the disputed domain name to direct Internet users to websites with pornographic content, which results in tarnishment of the TELIA mark.
Finally, the Complainant contends that the disputed domain name was registered and has been used in bad faith. The Respondent's use of it to provide sponsored links to third-party websites amounts to an intentional attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its website. B. Respondent
The Respondent did not reply to the Complainant's contentions and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14 (a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent's default. 6. Discussion and Findings
Under paragraph 4 (a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy. A. Identical or Confusingly Similar
The Complainant has proved that it owns trademark registrations for TELIA in, inter alia, the United States and the United Kingdom.
The disputed domain name is . It therefore contains, as its first element, the whole of the Complainant's registered trademark TELIA. The second element, “web” is descriptive of the Internet and websites and of products and services provided through those means. It is therefore generic and descriptive in respect of a wide range of goods and services. Moreover, it has a special relevance to the Complainant's business in telecommunications, which are fundamentally linked to the Internet.
UDRP panels widely agree that the mere addition of a descriptive term to a trademark does not avoid confusing similarity between the trademark and a disputed domain name, particularly (although not exclusively) where the descriptor is in some way relevant to the Complainant's business (see, inter alia, Playboy Enterprises International, Inc. v. Sookwan Park,WIPO Case No. D2001-0778; A, Inc. v. PDC,WIPO Case No. D2003-0076; and National Association for Stock Car Auto Racing, Inc. v. David Crawford, Jr.,WIPO Case No. D2001-1338).
In this case, the presence of the descriptor “web” in the disputed domain name does not detract from the confusing similarity created by the inclusion of the Complainant's trademark TELIA. If anything, it increases it, because the descriptive word “web” is likely to create the impression that the domain name is in some way linked to Internet-based telecommunications services provided by the Complainant under the TELIA name.
The Panel therefore finds that the disputed domain name is confusingly similar to an earlier trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The burden of proving absence of a right or legitimate interest in a disputed domain name falls on the Complainant, but UDRP panels have long recognised that the information needed to prove such a right or interest is normally in the possession of the respondent.
In order to avoid requiring complainants to prove a negative, which will often be impossible, panels have typically accepted that once a complainant has established a prima facie case that a respondent lacks rights or legitimate interests, the burden of proof passes to the respondent to show that he or she does indeed have such a right or interest (see, inter alia, Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110). In this case, the Complainant has put forward a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not authorised or licensed the Respondent to use a domain name including its TELIA trademark, and there is no evidence that the Respondent has commonly been known by a name corresponding to the disputed domain name. There is nothing on the record to indicate that the Respondent might enjoy a right or legitimate interest in the domain name, and it has not attempted to refute the Complainant's assertions.
The Panel notes that the Respondent has been using the disputed domain name to offer links to third-party websites with pornographic content. The Complainant alleges, and the Respondent has not denied, that the Respondent is deriving income from pay-per-click (“PPC”) advertising for these pornographic websites.
Panels recognise that the provision of PPC links through a landing site may amount to a bona fide offering of services capable of conferring a right or legitimate interest under paragraph 4 (c) (1) of the Policy, where domain names consist of dictionary words and their value as links to PPC landing sites is linked to the dictionary meanings, rather than to any trademark significance (see, inter alia, mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141).
That cannot be said to be the case where, as here, the disputed domain name consists of a complainant's trademark which has no dictionary meaning, coupled with a generic descriptive word relevant to that complainant's business.
Panels have frequently found that landing pages using domain names whose value as attractors is linked to trademark meaning are in themselves evidence of cybersquatting behaviour (see, inter alia, mVisible Technologies, Inc., supra; Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415; Grundfos A/S v. Texas International Property Associates,WIPO Case No. D2007-1448; Champagne Lanson v. Development Services/MailP, Inc., WIPO Case No. D2006-0006; The Knot, Inc. v. In Knot we Trust Ltd, WIPO Case No. D2006-0340); and Brink's Network, Inc. v. Asproductions,WIPO Case No. D2007-0353).
There is nothing in the evidence to suggest that the Respondent has any right or legitimate interest in the disputed domain name. The Panel finds that it has none. C. Registered and Used in Bad Faith
The Complainant did not submit evidence of the claimed well-known status of its TELIA mark, but it did refer to an earlier UDRP case, Sonera Ojy and Telia AB (Publ.) v. Daungsoo Ghim,WIPO Case No. D2002-0403, in which the panel took note of the international publicity accorded to the “Telia” name following the merger of the two Nordic entities that combined to create the Complainant, TeliaSonera AB, in 2002.
It is not clear from the record what reputation if any the Complainant enjoys in China, where the Respondent is based. However, a number of factors tend to point away from a good-faith acquisition of this domain name. One is the fact that “telia” is an invented word, without any dictionary meaning. The Respondent has put forward no explanation for how it came to adopt a domain name including that element. Moreover, the Respondent's modification of TELIA with the descriptive modifier “web” in the disputed domain name tends to suggest some knowledge of the Complainant, bearing in mind the direct descriptive connection between the word “web” and Internet-based telecommunications services. Again, the Respondent has offered no explanation of its conduct.
The Panel takes note of the Complainant's ownership of numerous domain names incorporating “telia”, including , which it registered on September 22, 2005, prior to the date on which the Respondent acquired the disputed domain name. The disputed domain name, , is notably similar to , and, again, the Respondent has offered no explanation for how it came to acquire a domain name that is an inversion of a domain name already owned by the Complainant, and incorporating the Complainant's coined trademark.
In the presence of all these factors and the absence of any indications to the contrary, the Panel finds it more likely than not that the Respondent was aware of the Complainant's TELIA trademark at the time that it acquired the disputed domain name.
Under paragraph 4 (b) (iv), the Panel is entitled to find both registration and use in bad faith where there is evidence that by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site or location or of a product or service on it.
In this case, it is clear that the Respondent has deliberately sought to derive PPC revenue from Internet users by creating a likelihood of confusion with the Complainant's trademark. It is likely that Internet users arriving at the Respondent's website are likely at that point to realise that it has no connection with the Complainant in light of the explicit adult content being offered. However, by that time, Internet users seeking the Complainant would already have been diverted to content that many are likely to find distasteful. Such conduct on the Respondent's part is inherently misleading and has the potential to tarnish the reputation of the Complainant's TELIA trademark.
UDRP panels have found in the past that the intentional use of a confusingly similar domain name to lure Internet users to a site hosting pornographic content or links to pornographic content is evidence of bad faith (see, inter alia, Caesars World, Inc v. Alaiksei Yahorau,WIPO Case No. D2004-0513; ABB Asea Brown Boveri Ltd. v. Quicknet, WIPO Case No. D2003-0215; America Online, Inc. v. Viper,WIPO Case No. D2000-1198; MatchNet plc. v. MAC Trading,WIPO Case No. D2000-0205; America Online, Inc. v. East Coast Exotics,WIPO Case No. D2001-0661; Coral Trademarks, Ltd. v. Eastern Net, Inc.,WIPO Case No. D2000-1295; Miroglio S.p.A. v. Mr. Alexander Albert W. Gore,WIPO Case No. D2003-0557; V&S Vin&Sprit AB v. Corinne Ducos,WIPO Case No. D2003-0301; and Deutsche Bank Aktiengesellschaft v New York TV Tickets Inc.,WIPO Case No. D2001-1314).
The Panel finds that the Respondent's conduct constitutes evidence of registration and use 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.
Angela Fox
Sole Panelist
Dated: October 22, 2009
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