The Complainant is Telstra Corporation Limited of Melbourne, Victoria, Australia, represented by Crowell & Moring, LLP, Belgium.
The Respondent is Graeme Riordan of Toolern Vale, Victoria, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with Crazy Domains FZ-LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 5, 2016. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 6, 2016, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 18, 2016. In accordance with the Rules, paragraph 5, the due date for the Response was initially November 7, 2016 but, following a request received on November 6, 2016 for an automatic four calendar day extension, the due date for the Response was extended to November 11, 2016. The Response was filed with the Center on November 11, 2016.
The Center appointed Matthew Kennedy as the sole panelist in this matter on November 29, 2016. 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 is Australia's largest telecommunications company and Australia's leading provider of mobile phones, mobile devices, home phones and broadband Internet services. The Complainant owns multiple registrations of the trademark TELSTRA, including Australian trademark registration number 579922, registered from June 5, 1992, specifying goods in class 9; and International trademark registration number 1176338, registered from February 1, 2013, designating jurisdictions including Australia, and specifying goods and services in classes 9, 35, 37, 41 and 42. Both registrations remain current. The Complainant operates official websites at "" and ".au" where it provides information about its products.
The Respondent is an individual in Victoria, Australia and the registrant of the disputed domain name. The disputed domain name was registered on January 2, 2015. The registrant's contact telephone number begins with 0409, which is a Telstra-assigned prefix. The disputed domain name resolves to a landing page which displays the disputed domain name together with the message "Domain name is registered and secured with CrazyD". At the landing page the Registrar offers domain, hosting and other services.
On October 24, 2016, the Respondent sent an email communication to the Registrar in which he advised that the use of the disputed domain name to resolve to a landing page advertising goods and services provided by the Registrar was not authorized by the Respondent and had been initiated and used without his knowledge or approval. The Respondent asked the Registrar to refrain from this use immediately and to write to the Center confirming that (i) the Registrar was using the domain landing page for its own purposes and (ii) the Respondent had never activated the use and was not currently using the domain for any purposes that the Registrar was aware of. 5. Parties' Contentions A. Complainant
The disputed domain name is identical to the Complainant's TELSTRA trademark. The Complainant has used that trademark since 1992. The addition of a Top-Level Domain suffix ("TLD") can be disregarded when comparing a domain name and a trademark under the Policy.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known by the disputed domain name. The Respondent has not acquired trademark or service mark rights and the Respondent's use and registration of the disputed domain name was not authorized by the Complainant. The disputed domain name currently resolves to a landing page of the Registrar which is not a legitimate or fair use under the Policy.
The disputed domain name was registered and is being used in bad faith. At the time that the Respondent registered the disputed domain name, it must have known of the Complainant and its TELSTRA trademark because that trademark is well-known all over the world and especially in Australia; the TELSTRA trademark has no generic or descriptive meaning; and a simple trademark or Internet search would have revealed the existence of the TELSTRA trademark. The disputed domain name currently resolves to a landing page of the Registrar but it is impossible to imagine any plausible legitimate use of the disputed domain name by the Respondent, especially in view of the well-known character of the Complainant's trademark. B. Respondent
The Respondent argues that he has a legitimate interest in collecting domain names. He currently has a total of about 145 domain names and has pre-registered for another 3,000. His collection of domain names is both lawful and respectful of the interests of any applicable trademark holders. The Respondent's domain names were not purchased and are not used or leased for any commercial gain, they have never been activated for use and have never been offered for sale and were initiated and reserved wholly for the Respondent's personal satisfaction as a collectable item. The Respondent disputes assertions in the Complaint (i) that he registered the disputed domain name in bad faith; (ii) that the passive holding of the disputed domain name amounts to bad faith use; and (iii) that there is no conceivable non-infringing use that he could make of the disputed domain name. The disputed domain name was not registered for any other purpose other than to be an addition to the Respondent's domain name collection. The Complainant could have registered the disputed domain name during the so-called Sunrise period or when the name was released to the public. In any event, the Respondent followed the correct process in registering the disputed domain name and the Complainant had no objection to the registration proceeding.
The Respondent submits that at no stage has he activated or used the disputed domain name in any fashion. The Complaint informed him that the name was parked at a landing page organized by the Registrar. That landing page appears to be advertising goods and services provided by the Registrar and wholly serves to the Registrar's benefit. The use of the disputed domain name for these purposes was not authorized by the Respondent and was initiated and used without his knowledge or approval. Soon after the Respondent became aware of this, he sent the email to the Registrar described in Section 4 above. The Registrar did not respond and the landing page remains unchanged.
The Respondent acknowledges that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Respondent followed all the established protocols related to the registration of the disputed domain name. The disputed domain name has no use attached to it and no intended use proposed for it.
The Respondent submits that he has the normal rights conferred on him by applicable laws, regulations, rules and detailed policies relevant to the acquisition and legitimate interests in respect of the disputed domain name. He is retaining the disputed domain name on a legitimate noncommercial and fair basis, without intent for commercial gain or anything misleadingly that could divert consumers or to tarnish the trademark or service mark of the Complainant. The Complainant uses search engine optimization so there are no problems landing on their primary web address with the simple use of the word "Telstra" in any established search engine. The Complainant has not submitted any information to suggest that it is suffering any material loss by not using the disputed domain name. Furthermore, the Complainant has not submitted any information to suggest it needs the disputed domain name to advance its commercial position or further develop its identity or brand recognition. As a collector of domain names, the Respondent does not have any physical use of the disputed domain name other than to maintain the registration and admire it as part of his collection from time to time.
The Respondent submits that the disputed domain name has not been registered and is not being used in bad faith. The Respondent has not used the disputed domain name. He has never offered a domain name for sale, has never purchased a domain name for re-sale, has never sold or leased a domain name and has never transferred a domain name to any one let alone a competitor of a trademark holder.
The Respondent is concerned that the Certification in the Complaint may be false. The Complaint is fundamentally based on the assertion that the Respondent has registered and used the disputed domain name in bad faith, which is false and not true and not supported by evidence. The Complaint appears to be peppered with statements and facts that are false and have been submitted with a view to advancing the position of the Complainant while building a case that from the outset had no merit and would otherwise fail. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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
Based on the evidence submitted, the Panel finds that the Complainant has rights in the TELSTRA trademark.
The disputed domain name wholly incorporates the Complainant's TELSTRA trademark as its initial and dominant element.
The only additional element is ".website" which is a TLD suffix. A TLD suffix generally has no capacity to distinguish a domain name from a trademark for the purposes of a comparison under the Policy. See Lego Juris A/S v. Chen Yong,WIPO Case No. D2009-1611; Dr. Ing. h.c. F. Porsche AG v. zhanglei,WIPO Case No. D2014-0080. In this case, the TLD suffix is ".website", which is merely a generic description of what a domain name can resolve to and does not dispel confusing similarity between the disputed domain name and the Complainant's trademark.
The Respondent acknowledges that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the respondent] of the dispute, [the respondent's] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel has already found that the disputed domain name is confusingly similar to the Complainant's TELSTRA trademark. The Complainant submits that it has not authorized the Respondent's use and registration of the disputed domain name.
As regards the first and third circumstances set out above, the disputed domain name has been parked at a landing page that offers domain and hosting services. That of itself does not constitute a bona fide offering of goods or services that would create a right or legitimate interest in the disputed domain name for the purposes of the Policy. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267. Given that the landing page offers services on a commercial basis, this use does not constitute a legitimate noncommercial or fair use of the disputed domain name for the purposes of the Policy either.
As regards the second circumstance, the Respondent's name is "Graeme Riordan". There is no suggestion that the Respondent has been commonly known by the disputed domain name.
Based on the above, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Respondent replies that he is retaining the disputed domain name on a legitimate noncommercial and fair basis. He submits that he has a legitimate interest in collecting domain names, that his collection of domain names is both lawful and respectful of the interests of any applicable trademark holders, that his domain names were not purchased and are not used or leased for any commercial gain, and that his domain names were initiated and reserved wholly for the Respondent's personal satisfaction as a collectable item.
Nevertheless, the Panel notes, as the Respondent himself acknowledges, that the disputed domain name has been parked at a landing page that offers domain and hosting services on a commercial basis. In other words, the disputed domain name is in fact being used for commercial gain, even though that gain accrues to a third party, namely, the Registrar. That is not a legitimate noncommercial or fair use within the meaning of the third circumstance set out above.
The Respondent's submits that he did not authorize the Registrar to use the disputed domain name in this way. Indeed, after the commencement of this proceeding the Respondent asked the Registrar to refrain from that use, without result.
The Panel finds it more likely than not that, prior to the filing of the Complaint, the Respondent was aware that the disputed domain name resolved to a website that offered commercial services and that he took no steps to prevent that use of the disputed domain name. The Respondent chose a domain name that, but for the TLD suffix, is identical to a well-known trademark. The Respondent has considerable experience in registering domain names. The disputed domain name was registered over 18 months ago. The Respondent admires his "collection" of domain names from time to time. The Registrar's website offers "free domain parking" with all domain names. There is no evidence on record of any attempt by the Respondent to prevent the commercial use of the domain name prior to the filing of the Complaint. Accordingly, the Panel considers the Respondent to be responsible for the commercial use of the disputed domain name and the Respondent has failed to rebut the Complainant's prima facie case.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. These circumstances are not exhaustive. The fourth circumstance is as follows:
"(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the respondent's] website or location or of a product or service on [the respondent's] website or location."
The disputed domain name was registered in 2015, years after the Complainant registered its TELSTRA trademark in Australia, where the Respondent is located. The disputed domain name, but for the TLD suffix, is identical to the Complainant's TELSTRA trademark. "Telstra" is an invented word with no dictionary meaning. The TELSTRA trademark is well-known in Australia due to the Complainant's very extensive use of it over many years in connection with telecommunications. The disputed domain name registrant's contact telephone number has a Telstra prefix. In view of all these circumstances, it is clear that the Respondent was aware of the TELSTRA trademark at the time of registration of the disputed domain name but deliberately chose to register it with a TLD suffix as a domain name.
The Respondent admits that he was informed that the disputed domain name triggered a trademark alert at the time of registration but insists that he followed the correct process and that the Complainant had no objection to the registration proceeding; in this regard, the Panel draws the Respondent's attention to paragraph 2 of the Policy, which is repeated in the Registration Agreement and states that "[i]t is [the respondent's] responsibility to determine whether [the respondent's] domain name registration infringes or violates someone else's rights." The fact that a trademark holder did not register a domain name during the Sunrise period, or did not respond to a notice of pending registration by the Respondent, does not mean that the trademark holder renounced any rights to that domain name. The fact that the Respondent respected the Sunrise registration does not preclude the Complainant from filing a complaint, or asserting its rights under the Policy. See Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912.
Accordingly, the Panel finds that the disputed domain name was registered in bad faith.
With respect to use, the disputed domain name has been parked at an active website from which the Registrar offers services on a commercial basis. The disputed domain name operates by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the landing page. This use was intentional and for the commercial gain of the Registrar as the operator of the landing page, even if not for the commercial gain of the Respondent. In any event, these facts satisfy the requirements of paragraph 4(b)(iv) of the Policy. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, supra.
For the reasons given in Section 6.B above, the Panel finds it more likely than not that, prior to the filing of the Complaint, the Respondent was aware that the disputed domain name resolved to a website that offered commercial services and that he took no steps to prevent that use of the disputed domain name. In these circumstances, it is more likely than not that the Respondent knew that Internet users seeking information about the Complainant's products and typing the Complainant's TELSTRA trademark into a browser with the TLD suffix ".website" would then find themselves at a website upon which services unrelated to the Complainant were advertised. See Owens Corning v. NA,WIPO Case No. D2007-1143
Accordingly, the Panel finds that the disputed domain name is being used in bad faith.
In light of the above findings, the Panel rejects the suggestion that the Certification in the Complaint was false.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy. 7. Decision
For 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.
Matthew Kennedy
Sole Panelist
Date: December 6, 2016
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