WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Telstra Corporation Limited v. Sean Mullen, Network Administrator Case No. D2010-0724 1. The Parties
The Complainant is Telstra Corporation Limited of Melbourne, Australia, represented by Davies Collison Cave, Australia.
The Respondent is Sean Mullen, Network Administrator of Queensland, Australia, represented by himself. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2010. On May 6, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On the same day, eNom 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 May 11, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 31, 2010. The Response was filed with the Center on May 26, 2010.
On May 10, 2010, the Respondent by email to the Center mentioned “related litigation” before the Australian Administrative Appeal Tribunal (“the AAT Litigation”). Further emails from the both parties on this issue followed on May 11, 2010, May 27, 2010, May 31, 2010 and June 1, 2010, and were included on the case file.
The Center appointed David Stone as the sole panelist in this matter on June 3, 2010. 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.
After the Panel had prepared a draft of this decision, further emails were sent to the Center by the Complainant on June 10, 2010 and by the Respondent on June 10, 2010. These addressed the AAT Litigation. At the request of the Panel, the Center advised the Parties on June 14, 2010 not to submit any further submissions. 4. Factual Background
The Complainant has operated under the name Telstra Corporation Limited and under the trade mark TELSTRA since July 1995. The Complainant is one of the largest publicly listed companies in Australia and offers a range of telecommunication and information services. In 2004 TELSTRA was listed as Australia's most valuable brand by Interbrand. The Complainant currently owns some 697 domain names containing the word “telstra” and maintains a large portfolio of TELSTRA trade mark registrations in Australia and many other countries. Since 2000, all employees of the Complainant have had an email address ending with the suffix “@”, and that email address has been widely communicated to the Australian public.
The disputed domain name was registered on December 16, 2004. The disputed domain name currently resolves to a single webpage hosting a letter from the Respondent to the Freedom of Information Officer of the Department of Broadband, Communications and the Digital Economy (“the Department”) requesting documentation. 5. Parties' Contentions A. Complainant
The Complainant alleges that the disputed domain name is confusingly similar to the TELSTRA mark, because it consists of the Complainant's well-known registered trade mark TELSTRA together with the common term “team”.
The Complainant submits that the Respondent had and has no right or legitimate interest in the disputed domain name and has not used the disputed domain name in connection with a bona fide offering of goods or services. Further, the Complainant has not licensed or otherwise permitted the Respondent to use its mark or the disputed domain name.
The Complainant submits that the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain, misleadingly to divert consumers or to tarnish the Complainant's trade marks because i) emails have mistakenly been sent to the disputed domain name address instead of to the Complainant; and ii) the Respondent is not using the disputed domain name to host a genuine, non-commercial criticism website.
The Complainant contends that the disputed domain name was registered for the purpose of disrupting the business of the Complainant, following cessation of negotiations in 2004 between the Complainant and the Respondent over proceedings issued by the Complainant for recovery of a debt owed to it by the Respondent. The Complainant contends that the single letter posted at the disputed domain name does not form sufficient basis for the Respondent to argue that the disputed domain name is being used as a genuine criticism website.
In addition, the Complainant has documented instances of emails containing confidential material being delivered to an email address featuring the suffix “@” and the Complainant contends that the Respondent has deliberately registered the disputed domain name for the purpose of misleading and deceiving Internet users into believing that such email addresses containing this suffix are being received by the Complainant. The Respondent, the Complainant submits, does not use the disputed domain name in any legitimate, good faith manner, and there is no legitimate, good faith use of the disputed domain name possible by the Respondent. B. Respondent
The Respondent has asked that the proceedings be adjourned because of the AAT Litigation between him and the Department. The hearing of the Respondent's application to the Australian Administrative Appeals Tribunal is listed in Brisbane, Australia, on July 1 and 2, 2010.
In the alternative, the Respondent contends that the disputed domain name is not a combination of a trade mark with a word which describes products or services provided by the Complainant and that the disputed domain name is not used in relation to any products or services offered by the Complainant.
The Respondent contends that the disputed domain name is not identical to a trade mark in which the Complainant has rights and is not confusingly similar to a trade mark in which the Complainant has rights.
The Respondent argues that there is legitimate interest in, and legitimate non-commercial fair use of, the disputed domain name and that the aim of the website at the disputed domain name is to publish genuine criticism of the Complainant. The Respondent states that the use of the term “Team Telstra” is a play on words in relation to Telstra's association with parties “it should not be associated with” and that the Respondent intends to publish further genuine criticism on the site, once the AAT Litigation has been resolved.
The Respondent contends that the Complaint has been brought to disrupt or prejudice pre AAT Litigation and requests a ruling of reverse domain-name hijacking. 6. Discussion and Findings
As noted above, the Respondent has asked that these proceedings be adjourned because of litigation between the Respondent and the Department. Paragraph 18 of the Rules provides:
“a. In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.”
Paragraph 18(b) is not relevant because the AAT Litigation was commenced prior to these proceedings.
By the Respondent's own admissions, the AAT Litigation is between the Respondent and the Department. The Complainant is not a party to those proceedings. Rather, those proceedings appear to involve an appeal from a refusal by the Department to release to the Respondent certain documents in the Department's control. The application for release of the documents was made by the Respondent under the Freedom of Information Act. The Complainant is, on the Respondent's admission, not subject to the Freedom of Information Act.
The Respondent alleges that despite the Complainant not being a party to those proceedings, the AAT Litigation is still “in respect of a domain-name dispute that is the subject of the complaint” within the meaning of paragraph 18(a) of the Rules because his original application under the Freedom of Information Act has been published on a website to be found at the disputed domain name and because the Complainant has referred to the Freedom of Information Act application in correspondence that also related to the disputed domain name. It cannot be that mere reference to litigation on a website somehow makes the domain name at which the website is hosted the subject of the litigation. Nor is a reference to a domain name in correspondence that is also about proceedings sufficient to make these proceedings “in respect of a domain-name dispute”. According to the Respondent's own submissions, the AAT Litigation concerns only the access to documents held by the Department. Nothing on the case file suggests that the Administrative Appeals Tribunal has jurisdiction to deal with the disputed domain name. The owner of the disputed domain name is also, by the Respondent's own admission, not subject to the Freedom of Information Act, which the AAT Litigation is based on.
Therefore, the Panel finds that the AAT Litigation is not “in respect of a domain-name dispute that is the subject of the Complaint”. On this basis, the Respondent's request for an adjournment is refused.
If, contrary to this finding, the Panel were to have found that the AAT Litigation is “in respect of a domain-name dispute that is the subject of the Complaint” then the Panel would not have exercised its discretion to suspend or terminate the administrative proceedings, but would have proceeded to a decision in any event for the reasons set out above.
Paragraph 4(a) of the Policy requires the Complainant to prove each and all of the following three elements in order to prevail in these proceedings:
(i) the disputed 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 interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Respondent does not dispute, because he could not, that the Complainant owns registered and other rights in the trade mark TELSTRA.
Previous UDRP panels have held that adding common terms to a registered trade mark and registering the result as a domain name does not mitigate the confusing similarity between the domain name and the mark (Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047 and Parfums Christian Dior S.A v. 1 Netpower, Inc.,WIPO Case No. D2000-0022).
Indeed, previous panel decisions have applied this reasoning to trade marks registered by the Complainant: Tesltra Corporation Limited v. Adult Web Development and Telstraexposed, WIPO Case No. D2002-0952; Tesltra Corporation Limited v.Peter Yellowlees, WIPO Case No. D2002-0638; Tesltra Corporation Limited v. David John Singh, WIPO Case No. D2002-0260; Tesltra Corporation Limited v. Zanzibar IT Computer Services,WIPO Case No. D2002-0127; and Tesltra Corporation Limited v. Totto Cutugno, WIPO Case No. D2007-1908.
The Panel therefore finds that the addition within the disputed domain name of the common term “team” does not mitigate the confusing similarity of the domain name to the Complainant's trade mark and other rights in TELSTRA.
Further, the Panel finds that the Complainant has rights through extensive use in the term Team Telstra, which term is identical to the disputed domain name.
Accordingly the Panel finds that the Complainant has established element 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Guidance in relation to establishing rights or legitimate interests is provided in paragraph 4(c) of the Policy. Three circumstances are identified: (i) bona fide prior use; (ii) common association with the domain name; and (iii) legitimate non-commercial use. The Complainant has made a prima facie case that the first two circumstances do not apply. The disputed domain name is not being used by the Respondent in connection with a bona fide offering of goods or services, nor is the Respondent commonly known by the disputed domain name.
The Respondent claims that his interest in the disputed domain name is to publish genuine criticism levelled at the Complainant. It is legitimate under 4(c)(iii) of the Policy to operate a domain name lawfully to criticise a trade mark owner. However, previous UDRP panels have held that such a right does not necessarily extend to owning a domain name identical to a sign identifying the trade mark owner: Skatterdirektoratet v. Eivind Nag,WIPO Case No. D2000-1314; Compagnie Generale des Matieres Nucleaires v. Greenpeace International, WIPO Case No. D2001-0376; Monty & Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300; Triodos Bank NV v. Ashley Dobbs, WIPO Case No. D2002-0776; Bett Homes Limited and Bett Brothers PLC v. Bill McFadyen,WIPO Case No. D2001-1018.
The use of the disputed domain name, which falsely conveys an association with the Complainant, leads Internet users to the website and misdirects emails to the Respondent.
As in Monty & Pat Roberts, Inc. v. J. Bartell,WIPO Case No. D2000-0300, the Respondent may consider that he has a genuine grievance against the Complainant. Be that as it may, that does not in this Panel's view entitle the Respondent to represent that he is the Complainant, and in using the disputed domain name, the Respondent has misrepresented to visitors and senders of emails that he is the Complainant. In Monty & Pat Roberts, Inc. supra, the Panelist stated that “the right to express one's views is not the same as the right to use another's name to identify one's self as the source of those views… In the Panel's view a deceptive use of another's trade mark as part of a domain name is rarely if ever likely to give rise to a right or legitimate interest in respect of a domain name.” This Panel agrees with that statement.
In any event, the use made of the disputed domain name does not, in the Panel's view, meet the criteria of being used to publish genuine criticism levelled at the Complainant. The website at the disputed domain name currently shows and has shown for some time only a copy of a letter dated December 11, 2008 from the Respondent to the FOI Officer of the Department. The letter could be interpreted as being critical of the Australian Government but it constitutes a freedom of information request rather than genuine criticism levelled at the Complainant.
The Respondent says that he will post more information critical of the Complainant to the website once the AAT Litigation is complete. No evidence was provided to support this assertion, particularly in the circumstances where the disputed domain name has been registered since 2004.
Therefore the Panel finds that the Complainant has established element 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Guidance regarding establishing bad faith is provided in paragraph 4(b) of the Policy. Four (non-exhaustive) circumstances are identified where the respondent's intention in registering a domain name may provide evidence of bad faith. These intentions may be summarised as follows: (i) to sell the domain name to the rights holder at a profit; (ii) to prevent the rights holder registering a domain name; (iii) to disrupt the business of a competitor; and (iv) to divert Internet traffic. The Complainant refers primarily to part (iii).
Given the fame of the TELSTRA mark, and the Respondent's previous dealings with the Complainant, the Panel finds that the Respondent was aware of the Complainant's rights in TELSTRA and Team Telstra at the time he registered the disputed domain name. The Panel therefore finds that the Respondent registered the disputed domain name to disrupt the business of the Complainant, by attempting to attract Internet users to his website (and hence divert Internet traffic and disrupt the business of the Complainant) by creating a likelihood of confusion with the Complainant's mark. The evidence is that this has, in fact, occurred.
Accordingly the Panel finds that the Complainant has established element 4(a)(iii) of the Policy.
The application for a finding of reverse domain name hijacking therefore fails. 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 disputed domain name be transferred to the Complainant.
David Stone
Sole Panelist
Dated: June 15, 2010
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